British-American Tobacco Co. v. British-American Cigar Stores Co.

• Decision Date: 10 February 1914
• Docket Number: 131.
• Citation: 211 F. 933
• Parties: BRITISH-AMERICAN TOBACCO CO., Limited, v. BRITISH-AMERICAN CIGAR STORES CO.
• Court: U.S. Court of Appeals — Second Circuit

211 F. 933

BRITISH-AMERICAN TOBACCO CO., Limited, v. BRITISH-AMERICAN CIGAR STORES CO.

No. 131.

United States Court of Appeals, Second Circuit.

February 10, 1914

Kearny & Dickinson, of New York City (Carroll G. Walter, of New York City, of counsel), for appellee.

Before LACOMBE, COXE, and ROGERS, Circuit Judges.

COXE Circuit Judge.

The question presented by this appeal is whether or not the complaint states a cause of action.

The complainant is a British corporation engaged in growing and manufacturing tobacco and dealing in tobacco, cigars cigarettes and snuff in England, America and elsewhere. It is authorized by its charter to buy, sell, grow, import and export tobacco, in all its forms, at wholesale and retail. It may organize or promote any company to deal in its products. Its business has existed since 1902 and has spread to all parts of the world. Its principal office is in London and its chief subsidiary office, since 1903, has been in New York. Although it has the right to sell at retail it has refrained from doing so because of a widespread prejudice among retailers against wholesalers who enter the retail trade and thus compete with their own customers. For these reasons the complainant, although it has a right to do so has not established a so-called chain of cigar stores or retail tobacco stores, as its doing so would greatly offend its customers and induce them to withdraw their trade.

The complaint further alleges that the defendant is a corporation recently organized in New Jersey, having no connection with Great Britain, and no inherent right to use the words 'British-American' in choosing its name 'British-American Cigar Stores Company.' It is alleged that the defendant has established a chain of cigar stores which it purposes to extend in the future and that its conduct has already caused great confusion and uncertainty in the tobacco trade and has been widely discussed in the trade journals inducing many interested persons to believe that the complainant is to engage clandestinely in the retail tobacco trade and is in competition with its own customers and intends to establish a retail business throughout this country. It is asserted, further, that the widespread belief thus engendered by the defendant's use of the complainant's name has been, and will continue to be, a great injury to the complainant and will impair its credit and good name and will enable the defendant to secure trade and credit under the belief that its stores are operated by or are under the patronage of, the complainant.

In short, without further entering into details, the contention of the complainant is as follows:

First: That it has for eleven years been engaged in the tobacco business throughout the world and has established an enviable reputation for financial responsibility and honorable dealing under the name British-American.

Second: That the defendant arbitrarily and without right has appropriated complainant's name, which is exclusively associated in the tobacco business with the products of the complainant.

Third: That the defendant is a New Jersey corporation with no business in England or anywhere else to warrant the use of the name British.

Fourth: That during the year the defendant has been operating, the use of the name British-American has caused great confusion and will continue to cause confusion in the future.

Fifth That the purchasing public having knowledge of complainant's goods and desiring to procure them will, misled by the name,...