A. Hollander & Son, Inc. v. Jos. Hollander, Inc.

• Decision Date: 11 December 1934
• Citation: 175 A. 628
• Parties: A. HOLLANDER & SON, Inc. v. JOS. HOLLANDER, Inc., et al.
• Court: New Jersey Supreme Court

175 A. 628

A. HOLLANDER & SON, Inc.

v. JOS. HOLLANDER, Inc., et al.

Court of Chancery of New Jersey.

Dec. 11, 1934.

Syllabus by the Court.

1. The law relating to fraudulent or unfair competition between traders is firmly established by our courts.

2. The underlying principle that no man has a right to palm off his wares as those of another, and thereby cheat the purchasing public and filch the business of his rival, is so essentially an element of natural justice, and so solidly imbedded in our jurisprudence, that all that is necessary to quicken a court of equity is to show that in the particular instance the offense has been committed.

3. The jurisdiction of courts of equity to prevent injury from infringement of trade-names has been liberally exercised and applied in all circumstances whenever it appeared that the name was an established, distinctive, and valuable adjunct to an undertaking, whether used to distinguish manufactured articles, a place of business, or a corporation.

4. While a personal name may not constitute a technical trade-mark, yet, where an article has come to be known by that personal name, one may not use that name, even though it be his own, to palm off his goods as the goods of another who has first adopted it, and by which appellation the goods have come to be known, when the use of his own name for such purpose works a fraud. If he uses his own name it must be so used as not to deprive others of their rights, or to deceive the public, and the name must be accompanied with such indications that the thing manufactured is the work of the one making it as would unmistakably inform the public of the fact.

5. The complainant, in order to succeed, need not show actual fraud by the defendant, or that any single person was deceived. It is sufficient if, in the opinion of the court, the symbol or device or get-up used by the defendant is one which so closely resembles the symbol, device, or get-up used by the complainant as to be likely to deceive the public. The decision of the question is one which must be committed to the eye and the sound judgment of the judge to whom the case is presented.

6. Acquiescence is not a bar to injunctive relief against future infringement and unfair competition, where, as here, complainant seeks no account for profits made by the defendant during the period of alleged laches and acquiescence.

Suit by A. Hollander & Son, Inc., against Jos. Hollander, Inc., and another.

Order in accordance with opinion.

Leber & Rubaek, of Newark, for complainant.

Milton M. Unger, of Newark, and David Steckler, of New York City, for defendants.

STEIN, Vice Chancellor.

A. Hollander & Son, Inc., a corporation, complainant, Jos. Hollander, Inc., a corporation and Joseph Hollander, defendants, are engaged in a business where both corporations receive raw skins or furs from others, subject these skins or furs to certain skilled processes, and thus produce finished furs for conversion into wearing apparel.

This suit is brought to enjoin the defendant corporation and Joseph Hollander from using the name "Hollander" either alone or as a component part of any trade-name in the business of dressing and dyeing furs; using the letter "J" in connection with the name "Hollander"; using the name "Hollander" and the letter "J" in such form or manner as may tend to confuse in the mind of the buying public or ultimate consumers the identity of the respective products of the complainant and defendant, or, in the alternative, should the court permit the defendants to use the name "Hollander," they be enjoined from using same, except in conjunction with the name "Joseph" fully written out and in such form and manner as will give to the name "Joseph" the same prominence and significance as will be given by the defendants to the name "Hollander" in all their advertising literature and matter, and for such other and further relief as may be just, and agreeable to equity and good conscience.

The proofs disclose that complainant's business was founded some forty five years ago by Adolph Hollander (now deceased), the father of Harry Hollander (now deceased), Michael Hollander, and Benjamin W. Hollander, the latter two named now being the president and treasurer, respectively, of the complaining corporation. Adolph Hollander was a brother of the defendant Joseph Hollander. The testimony is conflicting as to whether Adolph Hollander possessed skill in dyeing and dressing of furs prior to 1883, but that fact is of no moment, since prior to 1889 neither Adolph or Joseph was in business under the name "Hollander," both having been employed by others. Commencing with 1889 and down to 1896, the brothers Adolph and Joseph did business under the trade-name and style of "Hollander Bros.," and the name, therefore, during that period meant no more to the one than to the other. That firm failed of success, and, in 1896, Joseph sold his one-half interest for $2,000 and covenanted not to engage in the fur business for ten years. Thereafter Joseph was engaged as a saloon keeper until 1906, from then for two or three years in a fur business which failed, and later from 1910 to 1918 as a salesman for A. Hollander & Son, the firm to whose business the complainant succeeded by purchase in 1919. While so employed, Joseph Hollander was an "outside" man, soliciting orders, and had nothing to do with the technical work in the factories. Whatever value the name "Hollander" had acquired up to 1896, the time Joseph Hollander sold his interest in the firm of Hollander Bros., was part of the good will of the firm, and became the property of Adolph Hollander and his son, Harry, when they bought the interest of Joseph.

Adolph and his son, Harry, in 1896 formed a partnership known as A. Hollander & Son, later admitting Michael, Benjamin, and Albert Hollander into the firm. In the ten years following, Joseph, as agreed, did not engage in the fur dressing and dyeing industry, and no other "Hollander," according to the proofs before me, was engaged in this country under his own name in that industry.

In 1919, the then members of the firm of A. Hollander & Son incorporated the complainant company and sold to that company the firm's entire business consisting of its factories and its machinery, equipment, good will, and the exclusive right to the use of the trade-name of "A. Hollander & Son."

During the years intervening, the foundation for the reputation of A. Hollander & Son was built to the extent of where it now enjoys world leadership in its chosen field, because of the superiority of its product in color, finish, and durability, accomplished by years of experimentation in secret recipes, formulae, and methods as well as improved and advanced factory efficiency and management. This superiority of product is recognized in this country and abroad by dealers and manufacturers, and also by the ultimate users; the proof being that women shoppers for fur garments inquire whether the fur was dyed by "Hollander's," having learned from dealers or through the dealers' extensive advertising or the advertising indulged in by the complainant or by personal experience that the furs processed by A. Hollander & Son give superior service and satisfaction. The phrase "Hollander Dyed," the evidence shows, was understood by dealers, manufacturers, and ultimate users as designating and identifying the fur products of complainant. No other Hollander competing, the name, when used in connection with fur skins or fur garments, was understood and taken to mean furs dressed and dyed by A. Hollander & Son.

Albert D. Williams, president of J. D. Williams, Inc., fur dressers, whose business has been operated continuously for 117 years past, says "for many years prior to 1921 and ever since that year the products of the complainant, A. Hollander & Son, Inc., acquired and have continuously enjoyed fame for quality and leadership and are known throughout the country by the name 'Hollander' or 'Hollander Dyed.'" The president of Chapal Freres, Henry J. O'Toole, whose business was founded in Prance over a 100 years ago. and in this country in 1883, testified to complainant's activity in the field of Hudson seal prior to 1918 and says that, when in that year Joseph Hollander, the defendant, commenced doing business, he was unknown to the trade as a dresser or dyer, but known only as one of the salesmen for A. Hollander & Son, and that he enjoyed neither fame, reputation, nor background as a practical dresser or dyer.

Mr. Cohen, recently retired as a manufacturer of fur garments in New York City and in which business he had been engaged continuously for 40 years, says that complainant has been recognized as "the leader in the fur dressing and dyeing field, particularly with respect to its Hudson Seal product"; women buyers of fur garments would ask for "Hollander Dyed" skins; that the phrase acquired and retains a decided secondary meaning in the trade; that "Hollander" and the words "Hollander Dyed" commonly signify skins treated at complainant's factories. That prior to 1918 the name "Joseph Hollander" carried no significance in the fur industry for dressing or dyeing ability, reputation, or background.

Hudson seal is one of the principal items of product of both complainant and defendants, and was unknown in this country, according to the evidence, prior to 1908, except as it was imported from France. In 1908, J. D. Williams, Inc., and Chapal Freres commenced to produce Hudson seal in this country. In the year 1913, A. Hollander & Son entered the field and has ever since produced Hudson seal. It was not until the year 1917 that J. Hollander & Co., which corporation was organized by Jacob Hollander, son of the defendant Joseph Hollander, and who until that time was employed by A. Hollander & Son, also embarked upon the production of Hudson seal in Brooklyn, but its business lasted for only three months, when it was taken over by A. Hollander...