APPEAL from the Circuit Court of Cook County; the Hon. GEORGE
N. LEIGHTON, Judge, presiding.
MR. JUSTICE DOWNING DELIVERED THE OPINION OF THE COURT:
Rehearing denied October 31, 1973.
Plaintiff, Clairol, Inc., filed suit against defendants, Andrea Dumon, Inc., and its president, Bernard Malits, to enjoin distribution of Andrea Dumon "White Creamed Peroxide Developer," charging that the graphics, or "trade dress," on the defendants' container so closely imitated the graphics of plaintiff's "Pure White Creme Developer" that consumer would mistakenly purchase defendants' product in the belief it was plaintiff's.
The trial court permanently enjoined defendants from using plaintiff's trade dress, the court finding it to be colorably similar to plaintiff's. In addition, the court found defendants to have wilfully engaged in a deceptive trade practice, by wilfully simulating plaintiff's trade dress, and, accordingly, assessed against defendants the plaintiff's costs and attorneys' fees.
On appeal defendants contend the provisions of the Uniform Deceptive Trade Practices Act (Ill. Rev. Stat. 1967, ch. 121 1/2, sec. 211 et seq.), not pleaded in the complaint, are not applicable to this suit, the trial court's injunctive order is contrary to the law and the evidence; and the trial court's assessment of costs and attorneys' fees is not supported by the findings and is manifestly against the weight of the evidence.
Plaintiff is a well-known manufacturer and marketer of cosmetic products. Its trade name is "Clairol," through which it has established a large and successful business, especially in the sale of products for coloring and treating human hair. In 1958, plaintiff, dissatisfied with the quality of existing hydrogen peroxide products then on the market (used as a preparation along with hair color dyes), decided to market its own peroxide product, calling it "Pure White Creme Developer."
The market for products of this type is divided into two parts: the beauty salon trade and the retail market for sale to the general public. At first, distribution of Clairol's peroxide product was limited to the salon trade, and the original sold in 16 ounce bottles; in 1960, Clairol introduced the product into the retail market for sale to the general public, packaging the retail product in four ounce bottles.
In both the professional salon trade and the retail field, plaintiff's hydrogen peroxide became the leading product of its kind, and, up to 1965, sales of both versions exceeded $15,000,000, representing over 45 million units. The trade dress for both Clairol products is virtually identical, the smaller four ounce bottle graphics being replicas of those employed on the larger 16 ounce item.
Clairol's 16 ounce version was bottled in cylindrical clear glass, seven and one-half inches high, topped with a white plastic cap. When filled, the white color of the bottle's contents provided an opague background which emphasized the graphic elements printed on the outside of the bottle. Below the bottle's shoulder, Clairol placed a crown design, used on many of its products, and below the crown placed the word "Clairol," in block letters 3/16ths of an inch high. Below the name "Clairol" was a bar extending horizontally around 60 percent of the bottle's circumference, and beneath the bar were the words "Pure White Creme Developer," in block print 5/16ths of an inch in height. Descriptive words concerning plaintiff's product made up part of the bottle's format. A color sequence of alternating mustard-gold and black was employed for each element of the design: the crown design in gold; the name "Clairol" in black; a peaked bar in gold, with the words "Pure White" and "Developer" in black; and the word "Creme" in gold. On the back side of the bottle appeared advertising copy and directions for use of the Clairol product.
From 1959 to 1961, defendant Bernard Malits was regional sales manager for plaintiff with responsibility for sales to the retail trade in Illinois and surrounding states. After leaving plaintiff's employ, Malits began business through a corporation, Malits Drug Company, a chain of ten retail stores in Chicago, selling drugs, cosmetics, and related items, which did business under the trade name "Golden Gate."
In 1965, Malits organized defendant Andrea Dumon, Inc., an Illinois corporation, with headquarters in Chicago, and commenced marketing its cosmetic products in retail stores in various parts of the country. Malits was, and is still, the president of Andrea Dumon, Inc.; moreover, he owns most of the corporation's stock.
Sometime late in 1965, defendant corporation initiated plans to market its own cream peroxide product. In determining the trade dress design to be used for the product, one Mr. Zavell, defendants' sales manager, procured a number of sample bottles then being used by other companies, including Clairol's bottle for its "Pure White Creme Developer." Zavell prepared a rough-drawn sketch of what was to be defendants' bottle and trade dress for its 16-ounce capacity product, and submitted the sketch *fn1 for precise completion, to an artist employed by the corporation.
With respect to the sketch, the court below, as part of its findings of fact, found:
"A visual examination of the sketch discloses that it was copied directly from Clairol's 16 ounce bottle. The sketch closely follows the principal features of Clairol's trade dress, the sequence of design elements, the size, color and their special relationship(s) to each other. On the sketch are handwritten notations which show instructions that the artist follow the spacing of the bars and other elements of plaintiff's 16 ounce bottle; so that the end product would correspond to the principal features of Clairol's package. Together with this sketch, the artist was given instructions as to the ultimate product he was to complete. * * * From the sketch, and after some changes, the artist completed his art work, and designed the bottle which is the subject of this suit."
Early in 1966, defendant corporation started marketing its peroxide developer in two bottle sizes (a pint size and a five and one-half fluid ounce size), incorporating the graphic design produced from the sketch prepared by Zavell, and from instructions given the artist by defendants.
Defendants' bottle, as produced from their instructions, was also of the stock glass kind, cylindrical, approximately 16 ounces in capacity, and of the same physical configuration as plaintiff's bottle. It differed in some detail at the shoulder, and the bottle's cap was, in height, about twice the size of plaintiff's. At the top of the graphics on the bottle face was an artistic drawing of the Golden Gate Bridge (in mustard-gold), a design reproduced in a size approximating that of Clairol's crown device. Below this design, in plain block letters, appeared the words "Andrea Dumon" (in black), in letters smaller than the Clairol name on plaintiff's 16 ounce bottle. Below "Andrea Dumon" was a bar (in mustard-gold) extending horizontally around 60 percent of the bottle's circumference, and beneath the bar were the words "White (in black) Creamed Peroxide (in mustard-gold) Developer (in black)." And beneath those words, another mustard-gold bar. With the exception of details of little importance, defendants' bottles and trade dress were very similar to plaintiff's.
A visual comparison of the parties' 16 ounce bottles reveals a positive, striking likeness, not only in the respective locations and colors of the crown and bridge designs and the horizontal bars, but in the color schemes and sequences utilized, as well.
The first question presented is whether the Uniform Deceptive Trade Practices Act is applicable here, as plaintiff's complaint did not plead the statute. The Act was passed in 1965, approved August 5, 1965 (Laws 1965, p. 2647), and became effective January 1, 1966; the statute deals with false, concealing, or deceptive trade identification, ...