Andrew Jurgens Co. v. Woodbury-McGrath Co.

106 N.Y.S. 571 | N.Y. Sup. Ct. | 1907

Newburger, J.

For many years prior to June, 1901, the defendant John H. Woodbury and the John H. Wood-bury Dermatological Institute placed on the market a toilet soap known as Woodbury Soap and Woodbury’s Facial Soap. The soap was extensively advertised, and in these advertisements the name of Woodbury was the feature, and such advertisements referred to the fact that the soap was beneficial to the skin, scalp and complexion. Andrew Jurgens & Co., the predecessor of the plaintiff, manufactured and sold this soap as the agent of the defendant Woodbury, and from June, 1900, to June, 1901, expended the sum of $25,000 in advertising the soap. In June, 1901, in consideration of the sum of $212,500, Woodbury and all others interested transferred to Andrew Jurgens & Co. all the right, title and interest in and to the commodities known as facial soap, facial cream, dental cream, tooth powder, odorine powder, facial powder, shaving sticks, and “ all trade-marks, copyrights and privileges of every name and nature whatsoever appurtenant to the ownership thereof.” The firm of Jurgens & Co. transferred this agreement to the plaintiff, and since June 13, 1901, has expended about $480,000 in advertising the soap. The plaintiff has'built up a great sale for the soap, amounting to 720,000 cakes a year. Thereafter, and until Fovember, 1906, Woodbury ceased to engage in the soap business. About Fovember, 1906, the defendants placed upon the market a soap known as Woodbury’s Few Skin "Soap. The wrapper and box for this soap were not identical with the wrapper and box of the plaintiff, except for the name “ Woodbury,” which is prominently displayed on each box and cake. The evidence clearly shows that the plaintiff has expended large sums of money in advertising the business, and as a result the soap manufactured by the plaintiff has become well ¡mown to the trade and its business has become valuable by reason of the large expenditures in advertising the product. In Higgins Co. v. Higgins Soap Co., 144 N. Y. 462, it was held “ that an exclusive right may be acquired in the name in which a business has been carried on, whether that of a partnership or an individual, and it will be protected against infringement by another, and that an injunction will lie to restrain the simulation and use by one corporation of the name of a prior corporation which tends to create confusion and to enable the latter corporation to obtain the business of the prior corporation.” The contention of the defendants that plaintiff has been misrepresenting the origin, the place of manufacture, the medicinal, curative and antiseptic properties- of the soap manufactured by it is not borne out by the evidence in this case. On the contrary, the evidence clearly shows that the soap manufactured by plaintiff was prepared under a formula given to it by the defendant Woodbury. Hpon the whole case there is a reasonable presumption that the public will be misled if the defendants be permitted to continue to carry on the business of making soap under its present name. Judgment for the plaintiff.

Judgment for plaintiff.