{ "id": 5322288, "name": "People of the State of Illinois, Plaintiff-Appellee, v. Revlon, Inc. and Abbey Drugs, Inc., Defendants-Appellants", "name_abbreviation": "People v. Revlon, Inc.", "decision_date": "1968-09-25", "docket_number": "Gen. No. 51,850", "first_page": "463", "last_page": "474", "citations": [ { "type": "official", "cite": "99 Ill. App. 2d 463" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "46 NE2d 165", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "317 Ill App 451", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 5648918 ], "opinion_index": 0, "case_paths": [ "/ill-app/317/0451-01" ] }, { "cite": "102 NE 216", "category": "reporters:state_regional", "reporter": "N.E.", "year": 1891, "opinion_index": 0 }, { "cite": "258 Ill 618", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 4723974 ], "year": 1891, "opinion_index": 0, "case_paths": [ "/ill/258/0618-01" ] }, { "cite": "57 NE 26", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "185 Ill 195", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 3225630 ], "opinion_index": 0, "case_paths": [ "/ill/185/0195-01" ] }, { "cite": "76 NE 675", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "219 Ill 474", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 5621508 ], "opinion_index": 0, "case_paths": [ "/ill/219/0474-01" ] }, { "cite": "83 Ill App 592", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 5257637 ], "opinion_index": 0, "case_paths": [ "/ill-app/83/0592-01" ] } ], "analysis": { "cardinality": 810, "char_count": 21059, "ocr_confidence": 0.609, "pagerank": { "raw": 1.0193425622244675e-07, "percentile": 0.5448356255519144 }, "sha256": "163395484b0ae7334dd18f5b7ffb37f506df086b1cd5dcbc0a668f040d97d74c", "simhash": "1:f71b9e0567cea0dd", "word_count": 3476 }, "last_updated": "2023-07-14T22:48:23.218839+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "People of the State of Illinois, Plaintiff-Appellee, v. Revlon, Inc. and Abbey Drugs, Inc., Defendants-Appellants." ], "opinions": [ { "text": "STOUDER, J.\nThis is a criminal action initiated in the Circuit Court of Cook County in April 1965, on the complaint of Clairol, Inc., alleging that Revlon, Inc. and Abbey Drugs, Inc., defendants-appellants, violated the Illinois Trade Mark Statute, chapter 140, section 25, Ill Rev Stats 1963. The issues were determined by the court without a jury and this appeal follows from the judgments of the court finding each defendant guilty and assessing each a fine of $200.\nThe facts are undisputed and the evidence presented is quite simple. One of the witnesses testified to the purchase of a package of \u201cRevlon Colorsilk,\u201d a permanent hair dye which is one of defendant Revlon\u2019s products. The package was introduced as an exhibit. On the carton containing the hair dye, the product within was described as a Revlon product in large letters on the front, back, sides, top and bottom. In a column on one side of the carton, the various color shades of the Revlon hair dye are indicated and in the smallest letters appearing anywhere on such carton such color shades are compared with those of \u201cMiss Clairol Hair Color Bath.\u201d It is the reference to \u201cMiss Clairol Hair Color Bath\u201d which is the basis of this proceeding.\nOther witnesses for the People testified that \u201cMiss Clairol Hair Color Bath\u201d with a crown in the background, (such crown not appearing on the Revlon carton) is the registered trademark regularly used by Clairol, Inc. and further that Clairol had granted no license to Revlon for the use of such trademark.\nThe defendants presented only one witness, the Associate Research Director of Revlon. It was admitted that Revlon had not received permission from Clairol to use the latter\u2019s trademark. Revlon, although an established producer of cosmetics, did not enter the retail market in permanent hair dye until early in 1965, when it introduced \u201cColorsilk,\u201d a product designed to compete with Clairol\u2019s already established product \u201cMiss Clairol Hair Color Bath.\u201d Permanent hair dye is as the description implies, permanent. Once the dye has been applied to the hair the result cannot be changed except by cutting off the dyed hair or by redying. Because of the nature and effect of the dye it can only be reapplied infrequently. The result which may be obtained by the application of a particular shade of hair dye varies from individual to individual and depends upon the natural color and condition of the hair, as well as its previous treatment. Thus a familiar result is sought by the individual user. According to the witness, this familiarity of result is promoted by a common trade practice of using color comparison charts whereby the color shade to be expected from one company \u2019s product is compared with the result expected from a competitor\u2019s product. The witness identified forty-five hair dye color comparison charts used and distributed for many years by most of the major companies. Of such color charts three were issued by Clairol comparing its product with those of other established competitors (not including Revlon). Four of the charts were those issued by Revlon (not relating to the product \u201cColorsilk\u201d) comparing its product with that of Clairol and according to the witness no communication had ever been received from Clairol regarding such color comparison charts.\nTo demonstrate that in the hair dye industry the use of color comparison charts referring to competitors\u2019 products and trademarks was not atypical, the defendants introduced into evidence seventy-four products recently purchased in New York or Chicago which included a reference to a competitor\u2019s name or trademark. Defendants also introduced seventy-four advertisements which in the promotion of a product referred to the names and trademarks of competitors.\nIn seeking to reverse the judgments of the trial court, the defendants have made numerous assignments of error including improper application of statutes, violations of constitutional rights and failure to prove essential elements of the offense charged. In our view of this case the propriety of the judgments depends on the construction of the applicable statutory provisions.\nIn substance the complaint charged Revlon used Clairol\u2019s registered trademark without the latter\u2019s consent. The charge is based on a violation of section 25, chapter 140, Ill Rev Stats 1963, which provides, \u201cEvery person who shall use or display a trade-mark of which he is not the lawful owner in any manner not authorized by such owner shall be deemed guilty of a misdemeanor. . . .\u201d The narrow issue is whether the statute intends to proscribe conduct in the absence of any deception, namely, without regard to the intent, purpose or result of such conduct.\nIn support of the judgment of the trial court, the People argue that the court properly construed the aforementioned section of the statute as requiring per se application regardless of the intent, purpose or effect of the conduct of the defendant and reliance is placed upon the language of the section itself, other statutory provisions and the public policy of the State.\nSection 25, chapter 140, Ill Rev Stats 1963, was enacted in 1955, as a part of the general revision of chapter 140, Trade Mark Act of 1891. At the time of the revision of chapter 140 in 1955, the legislature also repealed section 288, chapter 38, enacted in 1953. Such section 288 provided, \u201cWhen a person uses any peculiar name, letters, marks, device or figures, cut, stamped, cast or engraved upon, or in any way attached to or connected with any article manufactured or sold by him to designate it as an article of peculiar kind, character or quality, or as manufactured by him, whoever shall, without his consent, use the same or any similar names, letters, marks, devices, or figures for the purpose of falsely representing any article to have been manufactured by him, or to be of the same kind, character or quality as that manufactured or sold by the party rightfully using the same, shall for each offense be fined not exceeding $200.\u201d The People argue that by repealing section 288, chapter 38, Ill Rev Stats 1953, and by failing to reenact any similar provision such legislative procedure represents a deliberate intent to eliminate the requirement of deception as an element of the offense.\nWe do not ascribe such significance to the repeal of section 288, chapter 38, Ill Rev Stats 1953. Although section 288, chapter 38 was enacted in 1953 such provision derived from previous sections 115 and 116 of chapter 38, which were in effect in 1891 at the time of the adoption of the Trade Mark Act of 1891, (chapter 140). In the first place if the legislature intended to eliminate deception as an element of a trademark violation it could have done so by merely eliminating \u201cfalsely representing\u201d from section 288, which it did not do. In the second place, the purpose and intention of the legislature in repealing section 288 is evident from and explained by other considerations unrelated to the view asserted by the People. Section 288 and prior sections 115 and 116 of chapter 38, were applicable to trademarks whether registered or not. White v. Wagar, 83 Ill App 592. The Trade Mark Act of 1891 (chapter 140) was applicable to registered trademarks only. Vincendeau v. People, 219 Ill 474, 76 NE 675. The legislature in its 1955 revision of chapter 140 provided in section 21 that \u201cNothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law,\u201d thereby making the provisions of chapter 140 applicable to trademarks whether registered or not. Under such circumstances the continuance of any provision relating thereto in chapter 38, became unnecessary. In the third place, such argument assumes that deception was not an essential element of the offense under the Trade Mark Act of 1891 (chapter 140) or if so included was not continued in the 1955 revision of chapter 140. As we shall later see, neither of these assumptions can be supported.\nSince there are no cases construing or applying section 25, chapter 140, Ill Rev Stats 1955, it is necessary and appropriate that we consider the nature of a trademark, the development of our theories relating thereto and the relation of such section to other sections of the 1955 revision of chapter 140 as well as to prior statutory provisions. Sections 24 and 25 of the 1955 revision of chapter 140 in effect in 1963, are derived substantially from sections 2 and 5, respectively, of the Trade Mark Act of 1891 (chapter 140, Laws of 1891). Present section 24 of chapter 140 provides, \u201cWhoever counterfeits or imitates any trade-mark of which he is not the rightful owner or in any way utters or circulates any counterfeit or imitation or knowingly sells or disposes of or keeps or has in his possession, with intent that the same shall be sold or disposed of, any goods, wares, merchandise, or other product of labor to which any such counterfeit or imitation is printed, painted, stamped or impressed, or knowingly sells or disposes of any goods, wares, merchandise or other product of labor contained in any box, case, can or package to which or on which any such counterfeit or imitation is attached, affixed, printed, painted, stamped or impressed, or keeps or has in his possession with intent that the same shall be sold or disposed of, any goods, wares, merchandise or other product of labor in any box, case, can or package to which or on which any such counterfeit, or imitation is attached, affixed, printed, painted, stamped or impressed, shall be punished by . . .\u201d Former section 2, chapter 140, Laws of 1891 provided, \u201cWhoever counterfeits or imitates any such label, trademark, term, design, device or form of advertisement, or sells, offers for sale or in any way utters or circulates any counterfeit or imitation of any such label, trade-mark, term, design, device or form of advertisement, or knowingly uses any such counterfeit or imitation, or knowingly sells or disposes of or keeps or has in his possession, with intent that the same shall be sold or disposed of, any goods, wares, merchandise, or other product of labor to which any such counterfeit or imitation is attached or affixed, or on which any such counterfeit or imitation is printed, painted, stamped or impressed, or knowingly sells or disposes of any goods, wares, merchandise or other product of labor contained in any box, case, can or package to which or on which any such counterfeit or imitation is attached, affixed, printed, painted, stamped or impressed or keeps or has in his possession with intent that the same shall be sold or disposed of, any goods, wares, merchandise or other product of labor in any box, case, can or package to which or on which any such counterfeit or imitation is attached, affixed, printed, painted, stamped or impressed, shall be punished by . . .\u201d Initially it should be noted that trademark is not defined in chapter 140 of the Trade Mark Act of 1891. Section 2 describes the interest or property right with respect to which conduct is proscribed as \u201c. . . label, trade-mark, term, design, device or form of advertisement. . . .\u201d Section 23 of the 1955 revision of chapter 140, defines trademark as, \u201cTrade-mark means anything adopted and used by a person to identify goods made, sold, produced or distributed by him or with his authorization and which distinguishes them from goods made, sold, produced or distributed by others.\u201d Thus it can be seen that the only substantial difference between present section 24 and prior section 2 is the employment of the term \u201ctrade-mark\u201d (defined in section 23) as the interest to be protected, for the previous language relating to labels, trademarks and forms of advertisements. This change or substitution is of utmost significance and importance since its full import involves considerations basic to an understanding of the provisions of the Trade Mark Act of 1891 and the 1955 revision.\nHistorically our concepts concerning trademarks are of fairly recent origin having developed during the last one hundred years. The Trade Mark Act of 1891 was enacted at an early stage in the evolution of trademark law and the importance of trademarks has increased as our system for the mass distribution of goods also has increased. The definition of trademark (section 23, chapter 140, Ill Rev Stats 1955) may be said to be the generally accepted common-law definition of a trademark. Such definition has, however, evolved over the years and it would appear that the Trade Mark Act of 1891 (chapter 140) does not reflect the concept of a trademark as it is presently understood and defined in the 1955 revision. The implications dependent on such definition have not always been clearly understood and applied. By its nature a trademark is symbolic, representative and intangible. It derives its benefit or value by imitative reproduction in association with the goods or services it is designed to promote. It has sometimes been confused with the agency of its communication. Lack of a clear awareness as to the true nature of a trademark interest has led to the use of imprecise language thereby contributing to ambiguity or misconception. A trademark is not a \u201clabel\u201d or a \u201cform of advertisement.\u201d They are only the means by which the symbolic identification represented by a trademark is communicated. The 1955 revision of chapter 140, by defining trademark and incorporating such definition by-reference, delineates the nature of a trademark from the agencies or instruments of its communication.\nIt would appear that the lack of a clear appreciation as to the nature of a trademark in section 2 (chapter 140, Laws of 1891) may have led to an uncritical adoption of language describing the conduct proscribed in the first clause of such section, such section provides \u201cWhoever counterfeits or imitates any such label . . . .\u201d Although \u201ccounterfeits or imitates\u201d is frequently used with the disjunctive implying similar or legally equivalent meaning, such is not the case. \u201cCounterfeit\u201d means \u201cfalse representation\u201d or \u201cimitation with intent to deceive,\u201d thus it may be said that something which is counterfeit is an imitation but it is more than an imitation, it is imitation plus deception. 10 Words & Phrases, 40. For example a painting may be copied or imitated but it will be a counterfeit only if it is represented to be the original. So long as the copy is represented as a copy or imitation it is not a counterfeit. White v. Wagner, 185 Ill 195, 57 NE 26, recognized that an imitated label was not a forged instrument either at common law or by statute. As set forth in White, supra, the essence of the injury to the property interest conferred by a trademark and an owner thereof was the deception of the person relying thereon. See also People v. Strieker, 258 Ill 618, 102 NE 216. Deception does not arise from mere imitation of a trademark but does arise from imitation and use in connection with the promotion of goods or services. The further provisions in section 2 (chapter 140, Laws of 1891) recognize the requirement of deception by describing imitation or counterfeit in connection with various phases of the promotion and sale of goods or services. Thus it may not be inappropriate to describe the violation in terms of \u201ccounterfeit\u201d if it be understood that such term includes the element of deception arising from the misrepresentation of identity. Section 24 of the 1953 revision retains the language \u201ccounterfeits or imitates\u201d as a general proscription of conduct as well as specifying acts or conduct in which \u201ccounterfeited or imitated\u201d trademarks are employed. As we have said before, \u201cimitation\u201d is included in the term \u201ccounterfeit\u201d and hence its meaning being limited thereby imitation alone can not be said to establish any misconduct. However where imitation is described in connection with other acts which do in fact describe misrepresentation of the identification conveyed by a trademark, deception does occur.\nIt also may be said that \u201ccounterfeit\u201d is sometimes used in opposition to \u201cgenuine\u201d and something which is \u201ccounterfeit\u201d is frequently described as \u201cnot genuine.\u201d This concept apparently led to the adoption of section 5, chapter 140, Laws of 1891, a predecessor to section 25, chapter 140 of the 1955 revision. Section 5 provides \u201cEvery person who shall use or display the genuine label, trade-mark, or form of advertisement of any such person, association or union, in any manner not authorized by such person, union or association shall be deemed guilty of a misdemeanor. . . .\u201d It would appear that this section was intended to be complementary to section 2 and apparently contemplated that if \u201ccounterfeit labels\u201d should be proscribed, \u201cgenuine labels\u201d could also be misused. Such intention represents a lack of appreciation of \u201ccounterfeit,\u201d meaning \u201cimitation with intent to deceive\u201d as applied to the imitation and use of a trademark. In the first place, it should be noted that section 5 continues to describe the interest to be protected in terms which fail to distinguish a trademark from the agency of its communication. In the second place the theory of \u201cgenuineness\u201d in opposition to \u201ccounterfeit\u201d has no meaning when applied to the misuse of a trademark. The interest in a trademark can only be exercised by imitation even by the owner. As a means of symbolic identification there can be no genuine trademark but only a reproduction thereof. In the third place, a term such as \u201cgenuine label\u201d has no particular application to a trademark violation since the essence of the offense is the sale or promotion of a product misrepresenting the product to be that of another. Such misrepresentation occurs even though labels printed by the owners thereof are used. It would appear that somehow or other the statute is concerned with the circumstance under which the labels are obtained such as theft. In our opinion although section 5 purports to describe an offense complementary or in addition to that described in section 2 it failed to do so.\nThe only changes of significance between section 5, chapter 140, Laws of 1891 and section 25, chapter 140 of the 1955 revision is that in the revision \u201ctrade-mark\u201d is substituted for the phrase \u201cgenuine trade-mark, label or form of advertisement\u201d and the phrase \u201cuse or display\u201d is substituted for \u201cdisplay.\u201d It would appear to us that the drafters of the 1955 revision initially recognized the confusion in the 1891 Act between a trademark and the agencies of its communication and that the principal change derived from section 5 was intended to make the provisions of the revision consistent in this respect without awareness either of the previous ambiguity of section 5 or of the conflict in section 25 with the language of section 24, chapter 140, of the 1955 revision. It is our conclusion that since section 24 of the 1955 revision of chapter 140 retains the essential basis of the offense described in section 2, chapter 140, Laws of 1891, namely \u201ccounterfeits or imitates with the intent to deceive,\u201d section 25 is in hopeless conflict therewith and in our opinion fails to state an offense.\nWe believe this view is supported by other considerations relating to public policy. Prior to the decision in Lady Esther, Inc. v. Lady Esther Corset Shoppe, Inc., 317 Ill App 451, 46 NE2d 165, the misrepresentation or deception which was considered the gist of a trademark violation was the \u201cpalming off\u201d of the product of one as being the product of another. The application of the misrepresentation or deception rule was applied only in the case of competitors. In the Lady Esther case the theory of deception was extended to noncompetitors or to those cases where the use of another\u2019s trademark would probably result in the purchaser being confused or mistaken concerning the relation of the owner of the trademark to the product sold. The concept of deception was extended from one of purpose or intent to include result. It was this theory of deception which was adopted in the 1955 revision of chapter 140 in section 19, applicable to civil remedies. Under such circumstances it would be difficult to conclude that the legislature intended to eliminate the requirement of deception as the basis for a trademark violation.\nFor the foregoing reasons the judgments of the Circuit Court of Cook County are reversed.\nJudgments reversed.\nALLOY, P. J. and CULBERTSON, J., concur.", "type": "majority", "author": "STOUDER, J." } ], "attorneys": [ "Friedman, Koven, Salzman, Koenigsberg, Specks & Homer, of Chicago (Sheldon Karon, Joseph A. Spitalli, and Stephen C. Shamberg, of counsel), and Paul, Weiss, Rif kind, Wharton & Garrison, of New York, N. Y. (Jay H. Ropkis and Robert L. Laufer, of counsel), for appellants.", "John J. Stamos, State\u2019s Attorney of Cook County, of Chicago (Elmer C. Kissane and Thomas Burnham, Assistant State\u2019s Attorneys, of counsel), for appellee." ], "corrections": "", "head_matter": "People of the State of Illinois, Plaintiff-Appellee, v. Revlon, Inc. and Abbey Drugs, Inc., Defendants-Appellants.\nGen. No. 51,850.\nFirst District.\nSeptember 25, 1968.\nFriedman, Koven, Salzman, Koenigsberg, Specks & Homer, of Chicago (Sheldon Karon, Joseph A. Spitalli, and Stephen C. Shamberg, of counsel), and Paul, Weiss, Rif kind, Wharton & Garrison, of New York, N. Y. (Jay H. Ropkis and Robert L. Laufer, of counsel), for appellants.\nJohn J. Stamos, State\u2019s Attorney of Cook County, of Chicago (Elmer C. Kissane and Thomas Burnham, Assistant State\u2019s Attorneys, of counsel), for appellee." }, "file_name": "0463-01", "first_page_order": 471, "last_page_order": 482 }