216 A.D. 53, Paul Westphal, Inc. v. Westphal's World's Best Corp.

CourtNew York Supreme Court Appellate Division. First Department
Citation216 A.D. 53
Date19 March 1926
PartiesPAUL WESTPHAL, a Corporation, Respondent, v. WESTPHAL'S WORLD'S BEST CORPORATION and Others, Appellants.
Docket Number.

Page 53

216 A.D. 53

PAUL WESTPHAL, a Corporation, Respondent,

v.

WESTPHAL'S WORLD'S BEST CORPORATION and Others, Appellants.

Supreme Court of New York, First Department.

March 19, 1926

Page 54

APPEAL by the defendants, Westphal's World's Best Corporation and others, from a judgment of the Supreme Court in favor of the plaintiff, entered in the office of the clerk of the county of New York on the 11th day of July, 1925, upon the decision of the court rendered after a trial at the New York Special Term.

The judgment enjoins and restrains the defendants from manufacturing, selling or dealing in hair tonics or barbers' supplies within the State of New York or elsewhere under the name of Westphal, Paul Westphal, Westphal's, Paul Westphal Co., Westphal's World's Best Corporation, or any of said names, or using said name of Westphal either alone or in conjunction with other words or symbols in connection with the hair tonic or barbers' supply business.

COUNSEL

Palmer & Serles [Martin Conboy of counsel; William Huck, Jr., with him on the brief], for the appellants.

Hamilton & Freeman [William H. Hamilton of counsel; Norman C. Conklin with him on the brief], for the respondent.

MERRELL, J.

The facts upon which this controversy depends are somewhat unusual. Both the plaintiff and the defendants are manufacturing and selling to the trade hair tonics of practically the same color and which for a time were put up in containers similar in form; and the tonics put out by both parties were quite similar in appearance, differing slightly in the perfume used in connection with their manufacture. These hair tonics had their inception many years ago with the coming to this country of a German by the name of Paul Westphal. The elder Paul Westphal was a barber and ran a small shop on the West Side. He appears to have been progressive and ambitious and to have been somewhat of a genius in the preparation of such lotions and tonics as were

Page 55

used by those engaged in his trade. In 1881 he invented and put upon the market, at first in a modest way and to a limited extent, a hair tonic which he called 'Westphal's Auxiliator.' This tonic had an alcohol base of fifty-five per cent. The tonic was put up in bottles of two sizes, five and one-half ounces and twelve ounces. The inventor obtained and registered at Washington a trade-mark represented by a small paster about an inch square of black with white lettering and in the center a red disk bearing the initials, 'P. W.' In 1882 he adopted and registered in the United States Patent Office at Washington, D. C., a label placed upon the bottles, at the top of which appeared the word 'Westphal's' and beneath in different type the word, 'Auxiliator; ' then, below, the statement that it contained fifty-five per cent of grain alcohol and was for the preservation, beauty, growth and restoration of the hair. Directions for using were printed on the label, and it was finally signed, 'Paul Westphal, New York.' There was also noted thereon that the label was registered in the United States Patent Office at Washington in the year 1882, and that the trade-mark was registered August 11, 1903. From 1881 until the present time the manufacture and sale of this tonic has continued, the same form of bottle being used with the same label as originally appeared upon the hair tonic put out by Paul Westphal. Paul Westphal died in 1907, leaving a widow and seven children, namely, his sons, Louis, Oscar, Edgar, Paul, Henry and Fred, and a daughter, Nellie. The widow and the seven children still survive. Paul Westphal made a will wherein he named his widow and his two sons Louis and Oscar as executors. They qualified as such and carried on the business founded by their father until the year 1910 when a corporation was formed under the name of Paul Westphal. The capital stock of the new corporation was held by the executors for the benefit of the estate. Louis Westphal was elected president and treasurer, Oscar Westphal, vice-president, and the widow, secretary of the corporation. That organization has continued until the present time. The hair tonic business from its beginning grew quite rapidly. The tonic itself is acknowledged by all to be a most excellent preparation, and is in general use in barber shops throughout the country. It is on sale at drug stores and in department stores. It is generally known under the trade name of 'Westphal's.' Indeed, the name 'Auxiliator,' somewhat difficult of pronunciation, is seldom used in the trade. A large amount of evidence was given at the trial to the effect that barbers are generally asked by their patrons for 'Westphal's,' and are accustomed to ask their customers if they shall use 'Westphal's' upon their hair. Thus the name of Westphal's has

Page 56

acquired a secondary meaning and in reality describes the hair tonic manufactured by the plaintiff and which was originally invented by the elder Paul Westphal. There is probably hardly a barber shop in the United States in a town of any importance which does not have Westphal's upon its shelves. It is no longer known as 'Westphal's Auxiliator,' but is generally known as 'Westphal's.'

The defendant Paul Westphal is a grandson of the original Paul Westphal. After the death of his grandfather and when he became a youth of seventeen years of age or thereabouts, the grandson was given employment by his uncles and grandmother, who were carrying on the business originated by his grandfather in the manufacture and sale of the hair tonic known as Westphal's. He evidently was not satisfied with his opportunities and worked for the plaintiff for only about eleven months. He was given the menial work of cutting up soap for an egg shampoo which the plaintiff was also manufacturing. He also was called upon to attend to the furnace used to heat the little factory where the hair tonic was made. He stated in his evidence that he was given the 'dirty work' to do. He received twelve or fourteen dollars a week at first and was finally paid twenty dollars a week for his services. He was not satisfied with this and he left the plaintiff's employ. He first engaged as a ticket agent at a station on Long Island, and afterwards went into the barbers' supply business, dealing generally in hair brushes, shaving tools, razors, lotions, hair tonics, soap, etc., used by barbers. He did not continue at this for long and finally undertook the manufacture and sale of a hair tonic himself. Sometimes he was in partnership with another and at times he ran the business alone. For some time while in partnership he used the name 'Paul Westphal Company,' and his hair tonic, resembling in color and appearance, and in similar containers to those used by the plaintiff, was sent out under the name of 'Paul Westphal Company.' It was called 'Westphal's World's Best Hair Tonic.' On the neck of the bottle used by the plaintiff for distribution of its 'Westphal's' there is an oval label upon which appears the words 'Guarantee Paul Westphal.' On the neck of the bottle put out by the defendants under the name of Paul Westphal Company, of their hair tonic, there was an oval label similar in shape to that used on the plaintiff's bottle, and upon which the words appear 'Guaranteed Paul Westphal Co., New York.' The defendant Paul Westphal, in or about November, 1924, in conjunction with the defendant Honic, incorporated his business under the name of 'Westphal's World's Best Corporation,' and upon their containers as used at the time

Page 57

of the trial there appeared upon the label at the foot thereof 'Manufactured by Westphal's World's Best Corp., Paul Westphal, Pres., New York.' It is the use of the word 'Westphal' in connection with the sale and distribution of hair tonic to which the plaintiff objects and which the court, by the judgment appealed from, restrained the defendants from using.

At first thought it would seem somewhat unusual, at least, that a man should be restrained from using his surname in connection with his business and in advertising wares which he manufactured. Unquestionably, if the evidence indicated that the defendants had acted honestly in adopting the word 'Westphal's' to describe their goods, and thereby they had not deprived the plaintiff of a property right in such name and had done nothing to injure the plaintiff, the court would have been compelled to deny the plaintiff injunctive relief. After reading the evidence in the case, we are convinced that the defendants have not acted honestly, but have illegally appropriated the name 'Westphal's' and have sought by advertising and by putting out their goods, to destroy the plaintiff and through fraud and deceit to deprive it of a property right which the plaintiff, through long years of hair tonic manufacture and in advertising the same and in dealing with the trade, had acquired. Not only this, but the evidence shows and is uncontradicted that the president of the defendant, young Paul Westphal, has threatened to destroy the plaintiff and to drive it into bankruptcy by appropriating the name 'Westphal's.' The evidence leaves no doubt in our minds that the defendants have been guilty of a most palpable fraud upon the plaintiff.

The defendant Honic, for several years was employed by the plaintiff as a salesman. While in such employ he secretly and without the knowledge of the plaintiff or its officers, while distributing plaintiff's product upon a ten per cent commission basis, was distributing and selling a competing hair tonic of his own manufacture. When the term of his original contract ended, Oscar Westphal, the plaintiff's vice-president and its real head, refused to give Honic a new contract. The plaintiff corporation has had many troublous experiences in connection with carrying on its business--internal as well as external. Repeated attempts have been made by others to appropriate its trade name and good will, and plaintiff...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT