75 N.Y.S. 964 | N.Y. App. Div. | 1902
The appeal in this action is from a judgment entered at the Special Term, by which the defendant, its officers, servants, attorneys and agents, were enjoined and restrained from using the title “El Falco,” or any name or title which would be held to constitute an infringement upon plaintiffs’ brand, trade mark or title of “ El Falcon ” in connection with the manufacture or sale of cigars within the United States; and it was also enjoined from branding, labeling or marking any boxes or packages containing cigars with the title “El Falco ” or any imitation of plaintiffs’ trade mark, title, symbols, devices or accessories, or from causing the same to be done; and it was likewise enjoined from using the word “ Falco ” alone or in any combination in connection with the manufadture or sale of cigars.
The evidence adduced at the trial satisfactorily established the right of the plaintiffs to the exclusive use of the words “ El Falcon ” as a trade mark. That arbitrary or fanciful designation was adopted by the predecessors of the plaintiffs in business some twenty years ago, and has been in continuous use by the plaintiffs and their predecessors as manufacturers of cigars from its adoption until the present time. The proof shows that this designation is used in connection with a well-known and favorite brand of domestic cigars and is of great value to the plaintiffs. The defendant, who is a rival cigar manufacturer, adopted and used the words “ El Falco ” as a trade mark designation and brand of cigars manufactured by it at Porto Rico.
The right of the plaintiffs is fully established, and the testimony
The claim of the defendant that the words “ El Falco ” are part of the name of the defendant’s . manager and were used by it with his permission, and that its brand is named after him, w:as evidently a device by which it was sought to evade responsibility for infringing the plaintiffs’ right. As the justice at Special Term very properly says in his opinion : “ The law will protect the right of a man to use his own name in his own business even if by so doing he may injure another of the same name who has gained a reputation in the same or a similar business; but in such cases it must appear that the.name was honestly used, and the court will permit no artifice or deceit designed or calculated to mislead the public. (Higgins Company v. Higgins Soap Company, 144 N. Y. 462.) ” That the alleged permission of the defendant’s manager to use his name upon a brand of cigars is a mere device, is proven by the fact that the manager’s name is Gregorio Lopez; that he was always known in Porto Rico and Cuba by the name óf Lopez; and although he swears that his name is Gregorio Lopez y Falco, he does not
The defendant claims that the judgment should be reversed for an error in the exclusion of evidence. It endeavored to show on the cross-examination of one of the plaintiffs that those plaintiffs did not come into court with clean hands, and that they were not entitled to relief because of an alleged imposition upon the public by false representations as to the character and quality of the cigars manufactured and sold by them. The defendant claims that it was entitled to make that proof; that on the pleadings as they stood, it was an issuable .fact. The plaintiffs stated in their complaint that their trade mark was used in connection with a brand' of cigars “ of excellent quality of material and superior workmanship, and the cigars are known as clear Havana cigars of the highest grade manufactured in the United States, being manufactured at Key West in the State of Florida, in plaintiffs’ factory, by skilled and experienced workmen.” This allegation of the complaint is made in connection with the averment that the plaintiffs had adopted and used the trade mark which they claim. The contents of the paragraph of the complaint in which these allegations are contained is denied, and' the defendant now contends that it was entitled, by reason of the condition of the pleadings, to show that the cigars of the plaintiffs known as the “El Falcon” brand were not a superior article or excellent quality and material, and not clear Havana cigars of the highest grade manufactured in the United States, and were not manufactured by skilled and experienced workmen; or, in other words, that it was entitled to show that the plaintiffs were misleading and deceiving the public, and not manufacturing and selling such a brand of cigars as they claimed.
The denial in the answer cannot be construed as entitling the defendant to give affirmative evidence as to the inferiority of the plaintiffs’ goods or as to false representations concerning them which would mislead the public. The only possible effect of that denial would be to put the plaintiffs on proof of the allegation of the complaint in that behalf. But that was an entirely immaterial allegation so far as the plaintiffs’ right to an injunction for the infringement of their trade mark was concerned and they were not required to prove it. That the court would refuse to protect the
The judgment should be affirmed, with costs.
O’Brien, McLaughlin and Laughlin, JJ., concurred; Van Brunt, P. J., dissented.
Judgment affirmed, with costs.