Hilton v. Hilton

• Decision Date: 20 June 1919
• Docket Number: No. 49.,49.
• Citation: 107 A. 263
• Parties: HILTON v. HILTON.
• Court: New Jersey Supreme Court

107 A. 263

HILTON

v. HILTON.

No. 49.

Court of Errors and Appeals of New Jersey.

June 20, 1919.

Syllabus by the Court.

Appeal from Court of Chancery.

Suit by Philip Hilton against Joseph Hilton to restrain unfair use of a trade-name, etc. From an order adjudging defendant guilty of contempt (106 Atl. 139) for violation of the decree entered upon remittitur from the Court of Errors and Appeals, defendant appeals. Affirmed.

See, also, 102 Atl. 16; 104 Atl. 375, L. R. A. 1918F, 1174; 105 Atl. 65.

Selick J. Mindes and Robert H. McCarter, both of Newark, for appellant.

Waldron M. Ward and John R Kardin, both of Newark, for respondent.

TRENCHARD, J. This is an appeal by the defendant from an order in an unfair trade case adjudging the defendant guilty of contempt for violation of the decree entered upon remittitur from this court, modifying in part, and affirming otherwise, the decree made upon the final hearing of the cause.

The complainant filed his bill November 18, 1916, setting forth that prior to June 24, 1916, he and the defendant had been engaged as partners in the clothing business under the name of "The Hilton Company"; that they had built up a large business in the city of New York, Brooklyn, and other cities not now requiring mention; that, in the course of the conduct of the business, the partnership had used the words "Hilton" and "Hilton's" alone and in combination with other words to designate and describe their merchandise, and as a trade-name; that they had expended large sums in advertising the business under such trade-names; that on June 24, 1916, the defendant had conveyed all of his right, title, and interest in the partnership to the complainant, including all his right, title, and interest to the name and good will of the business; that complainant thereafter continued to conduct such business under such trade-names in the same localities; that the business continued to be of large volume; and that the same general methods of advertising were continued.

The bill also alleged that, shortly before its filing, defendant had begun a competitive clothing business in the city of New York and other localities, and was conducting such business under the trade name "Hilton's." The bill further averred confusion and prayed relief.

After hearing, Vice Chancellor Lane in his conclusions, which are reported in 102 Atl. 16, held that the use by the defendant of the trade-name "Hilton's," in the manner it was used in connection with stores in close proximity to those of the complainant, could not but lead to confusion and tend to injure the complainant in his business, and he therefore enjoined the defendant.

An appeal was taken, and this court in an opinion reported in 104 Atl. 375, L. R A. 1918F, 1174, expressly and unqualifiedly held that "the evidence entitled the complainant to the relief prayed for," but not exactly that granted in the Court of Chancery, and accordingly, on remittitur, a decree was entered in the Court of Chancery on July 18, 1918, enjoining the defendant Joseph Hilton:

"From using the name 'Hilton's' or 'Hilton,' alone or in such manner as to lead or induce the public to believe that the goods manufactured or sold by him are manufactured or sold by complainant and that the business conducted by defendant is the same as or a part of the business conducted by complainant, from using any emblem or device resembling the trade emblem of complainant in any way in his business, and from conducting his business so as to deceive the public and induce it to believe that the goods manufactured or sold by defendant were manufactured or sold by complainant and that the business conducted by defendant is the same as or a part of the business conducted by complainant."

Following the service upon the defendant of this decree (according to the Vice Chancel lor), for a considerable time he conducted his business regardless of such decree (see opinion in first contempt proceedings, 105 Atl. 65), but later added to the word "Hilton's," on his store signs, the words "J. Hilton, Prop." Then the complainant, on August 23, 1918, instituted the first contempt proceedings. After hearing, the Vice Chancellor adjudged the defendant guilty, but purged him of the contempt upon payment of costs and counsel fees, in view of his discontinuance of such signs after the commencement of the proceedings. But since no appeal was taken in that proceeding, we are not concerned with that, except as it may throw light upon the good faith of the defendant's conduct now in question.

The defendant then adopted as the style of his trade-name the words now in dispute, "Jos. Hilton & Co." His newspaper advertising under this name began in the latter part of October, and his new signs were put up in the latter part of November.

The complainant filed his petition on December 23, 1918, alleging the use of this name in the conduct of the defendant's business in New York City and elsewhere, and praying that the defendant be adjudged guilty of contempt, and after hearing he was adjudged guilty.

The issue made by the petition and answer (to which the scope of the hearing was strictly confined), and now presented on this appeal, is whether the use by the defendant of the words "Jos. Hilton & Co.," as the style under which he conducts his clothing business in competition with the complainant, leads or induces the public to believe that the goods manufactured or sold by him are manufactured or sold by complainant, and that the business conducted by the defendant is the same as, or part of, the business conducted by the complainant.

We think that issue must be determined against the defendant. The rights of the parties were settled in general terms by the final decree. Thereby the defendant was restrained from using the name "Hilton" in such manner as to mislead the public. Whether or not he has done so is a question of fact. The test is whether the use by the defendant of the words in dispute is likely to deceive ordinary purchasers buying with such care as would...