31 N.Y.S. 102 | N.Y. Sup. Ct. | 1894
“Deer River” is the name of a village and post office in the town of Denmark, in the county of Lewis. Prior to 1891, the plaintiff Gebbie had for many years been engaged at that place in the manufacture and sale of a certain kind of plow, having stamped upon the top of the beam the name “Deer River” as a trade-mark, and it was known generally to the public as the “Deer River Plow.” An extensive and lucrative business had been established, and the name “Deer River,” as applied to that particular kind of plow as a trade-mark, had become of great value, and relied on by the public as a guaranty of a good article. Early in 1891 the plaintiffs became
In Newman v. Alvord, 51 N. Y. 189, it was held that the name of a place may be adopted and used as a trade-mark. The right of protection against an infringement upon such use is not necessarily
In Wotherspoon v. Currie, L. R. 5 H. L. 508, it was held that the name of a place may become a trade denomination, and, as such, the property of a particular person who first gives it to a particular article of manufacture, and the employment of the name by another person for the purpose of describing an imitation of that article is an invasion of the right of the original manufacturer, who is entitled to protection by injunction. Of this case Judge Earl, in the Newman Case, says:
“In that case the plaintiffs, and those to whom they succeeded, had formerly carried on the business of starch makers at Glenfield, near Paisley, and their starch had become known in market, and was sold, as ‘Glenfield Starch.’ After the plaintiffs’ starch had become thus known, they removed their starch works from Glenfield to another small place near Paisley, and there continued to manufacture their starch, which continued to be known and sold as ‘Glenfield Starch.’ The defendant afterwards commenced to manufacture starch at Glenfield, and placed on the labels upon his packages of starch the word ‘Glenfield,’ and sold his starch as ‘Glenfield Starch.’ He claimed the right to do this because his starch was made at Glenfield, and the plaintiffs’ was not. But it appeared that he used the word ‘Glenfield’ for a fraudulent purpose,—to increase his sales at the expense of the plaintiffs by inducing the public to purchase his starch under the belief that it was the starch made by the plaintiffs,—and it was held that the plaintiffs were entitled to be protected in the use of the word as their trade-mark. The defendant could truthfully apply the word ‘Glenfield’ to his starch, but he was restrained because he applied it with a fraudulent and dishonest purpose.”
In High on Injunctions (section 1069) it is said:
“The protection afforded by courts of equity against the infringement of trade-marks is not dependent upon any exclusive right to a particular name or to a precise form of words. The right to relief is rather dependent upon the necessity of extending protection against the commission of fraud, and this fraud may consist in the use of a name to which defendant is entitled, if such use be coupled with other circumstances rendering it an. infringement of complainant’s rights.”
In Lee v. Haley, 5 Ch. App. 161, it is said that:
“The principle upon which the cases on this subject proceed is not that there is property in the word, but that it is a fraud on a person who has established a trade, and carries it on under a given name, that some other person should assume the same name, or the same name with a slight alteration, in such a way as to irduce persons to deal with him in the belief that they are dealing with the person who has given a reputation to the name.”
In Lea v. Wolf, 46 How. Pr. 159, it is said:
“When words or names are in common use, no one person can claim a special appropriation of them to his peculiar use; but where words, and the allocation of words, have, by long use, become known as designating the article of a particular manufacturer, he acquires a right to them, as a trade-mark, which competing dealers cannot fraudulently invade. The essence of the wrong is the false representation and deceit. When the im*105 proper design is apparent, an injunction should be issued. In such cases, injunctions have been sustained though the name of a place, or of a celebrated person, were within the trade-mark protected by the injunction.”
In Evans v. Von Laer, 82 Fed. 153, it was held that the plaintiff would be protected in the use of a geographical name in case there was fraud on the part of defendant, and the case of Mill Co. v. Alcorn, 150 U. S. 460,14 Sup. Ct. 151, does not lay down a contrary rule.
In the present case, the special term, from the papers before it, had a right to assume that the defendant was not in good faith using the name “Deer River” as indicating the place of manufacture; that he did not obtain on his purchase from the plaintiff Gebbie the good will of the business, but bought the property for another purpose, as he represented when he bought it; that he surreptitiously obtained the patterns of the plaintiffs, or duplicates, and made his plows therefrom, and was in the attitude of committing or attempting to commit upon the plaintiffs a fraud by inducing persons to deal with him under the belief that they were dealing with the person, or the true representatives of the person, who had given a reputation to the name; and that he in substance falsely represented to the public and to plaintiffs’ customers that he owned the good will of the business. In this view of the case, and in the light of the authorities referred to, it should not be said that the special term erred in declining to vacate the injunction. The discretion of the special term in the matter (Hudson River Tel. Co. v. Watervliet Turnpike & R. Co., 121 N. Y. 397, 24 N. E. 832) should not be interfered with. All concur.
Order affirmed, with $10 costs and disbursements.