82 N.Y. 519, Hier v. Abrahams

Citation:82 N.Y. 519
Party Name:JOHN P. HIER et al., Appellants, v. ABRAHAM ABRAHAMS et al., Respondents.
Case Date:November 16, 1880
Court:New York Court of Appeals
 
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Page 519

82 N.Y. 519

JOHN P. HIER et al., Appellants,

v.

ABRAHAM ABRAHAMS et al., Respondents.

New York Court of Appeal

November 16, 1880

Argued Sept. 29, 1880.

Page 520

COUNSEL

John C. Hunt for appellants. In equity, aside from the statute, plaintiffs are entitled to the relief asked for. (4 Abb. [ N. S.] 410; 48 N.Y. 374; 61 Id. 226; 2 Daly, 521; 49 Barb. 588; 51 N.Y. 189; 45 Id. 291; 1 Weekly Dig. 529; 8 Id. 514; 7 Abb. N. C. 17; 21 Alb. Law Jour. 340; 5 Weekly Dig. 283.) Defendants were precluded by admissions in the answer, from denying that plaintiffs had a prior adoption of the word "Pride." (38 N.Y. 28.)

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W. E. Lansing for respondents. Protection to trade-marks rests upon the principle of preventing a fraudulent appropriation of a name, by which only the products or manufacture of another is designated, and of shielding the public against deception. (Wolfe v. Burke, 7 Lans. 155.) To entitle a party to relief, the resemblance must amount to a false representation of the facts indicated by the genuine mark; that is, of the manufacture or proprietorship of the article. (Popham v. Call, 66 N.Y. 75; Amoskeag Manuf. Co. v. Spear, 2 Sandf. 599.) Where the points of difference are so prominent and striking as to produce the impression that the articles are different, an action for the injunction cannot be maintained. (Talcott v. Moore, 6 Hun, 106; 2 Sandf. Ch. 622; Howard's App. Cases, 547; 66 N.Y. 69.) The court is not bound to interfere when ordinary attention will enable purchasers to discriminate between the trade-marks used by different parties. (2 E. D. Smith, 387; 25 Barb. 79; Upton's Trade-marks, 203, 4, 8, 14; 47 N.Y. 104.) A party cannot appropriate a word in common use as his trade-mark so as to exclude others. (18 How. Pr. 64; 7 Lans. 151; 56 N.Y. 115; 57 Barb. 524; 6 Hun, 106; Caswell v. Davis, 58 N.Y. 234, 235.) A trade-mark is protected only when it denotes the origin and the manufacturer of the article; that is, that the origin and manufacture is in the plaintiff. (17 Barb. 608; 7 Id. 226; Upton's Trade-marks, 100, 177; Fetridge v. Wells, 13 How. 385.) When a trade-mark does indicate the origin and manufacture of the article, the party must have the exclusive right to use the same. (Upton's Trade-marks, 23, 98, 99, 209; 2 Barb. Ch. 103; 2 Sandf. Ch. 599.) Plaintiffs' right being disputed, the application could not be allowed until they had established a legal right in an action at law. (2 Sandf. Ch. 599, 622; 4 Abb. Pr. 166; 13 How. Pr. 342; 2 Barb. Ch. 101; 3 Abb. Pr. 318; 18 Barb. 64; 24 Id. 163.)

RAPALLO, J.

The plaintiffs, composing the firm of Hier & Aldrich, and being engaged in the business of manufacturing

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cigars in the city of Syracuse, claim to have adopted as a trade-mark, to be placed on boxes of cigars manufactured by them, the word "Pride," and that this trade-mark was infringed by the defendants, who were also manufacturers of cigars in the same city, doing business under the firm name of Abrahams & Co.

The trial court found as facts...

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