Int'l Silver Co. v. William H. Rogers Corp.

• Decision Date: 06 March 1905
• Citation: 60 A. 187,67 N.J.E. 646
• Parties: INTERNATIONAL SILVER CO. v. WILLIAM H. ROGERS CORP.
• Court: New Jersey Supreme Court

60 A. 187

67 N.J.E. 646

INTERNATIONAL SILVER CO.

v. WILLIAM H. ROGERS CORP.

Court of Errors and Appeals of New Jersey.

March 6, 1905.

(Syllabus by the Court.)

Bill by the International Silver Company against the William H. Rogers Corporation, From an order denying an accounting (57 Atl. 725), complainant appeals; and from a decree for an injunction (57 Atl. 1037), both parties appeal. Reversed.

Edward A. Day, Hiram R. Mills and John P. Bartlett, for complainant. Craig A. Marsh, for defendant.

SWAYZE, J. From the decree awarding an injunction, both parties have appealed. From the order denying the complainant an accounting, the complainant has appealed.

We think the Vice Chancellor was right in granting the injunction, and the defendant's appeal from the decree fails, and that he was right in refusing the accounting, and the complainant's appeal from the order fails. In these respects we have nothing to add to the accurate statement of the law by the Vice Chancellor.

We think he erred in refusing to enjoin the defendants from using the word "Rogers" in any form—even as a part of the corporate defendant's name—in connection with the manufacture and sale of silver-plated tableware carried on by or on behalf of the corporate defendant. The question involved is not the right of an individual to use his own name. That question sometimes presents difficulties which can only be met by permitting the use of the name in such a way that it shall not amount to misrepresentation as to the goods sold thereunder. The case does not even involve the somewhat narrower question of the right of a corporation to adopt a name which, when applied to the goods sold thereunder, is calculated to deceive purchasers. The later authorities favor injunctions restraining the use of the corporate name without qualification. North Cheshire & Manchester Brewery Company, Limited, v. The Manchaster Brewery Company (1899) A. C. 83, affirming the decision of the Court of Appeal (1898) 1 Ch. 539. The present case presents the still narrower question of the right to adopt and use a corporate name calculated to deceive, with an intent to profit by the trade reputation of others. The defendant corporation did not adopt its name in order to secure the good will of a business which had been built up by William H. Rogers. The facts stated in the Vice Chancellor's opinion, and sustained by the evidence, demonstrate, in our judgment, that William H. Rogers had engaged in the business of selling silver-plated ware, as far as he can be said to have engaged in that business at all, in view of his other vocations, solely with the object of profiting by the similarity of his name to the name of Rogers, so well known in the trade, to the good will of which the plaintiff had succeeded. William H. Rogers, under the facts of this case, had not acquired a trade reputation for silver-plated ware. He had had no experience in the actual manufacture. His name was not a guaranty of the excellence of his wares. His experience was little more than that of a mere packer of goods made by others. Most of the goods nominally made for him, he had never seen or handled. He had had no more to do with the actual sales during the more active part of the business (that during which the Benedicts handled the goods in his name) than to receive a small profit over the manufacturer's price—a profit which was manifestly paid to him by the Benedicts in order that they might use the name of Rogers, and thereby profit by the trade reputation of the complainants. The name of the defendant could not, therefore, have been selected with a view to retain for the corporation the good will of William H. Rogers. It was selected, in our judgment, solely with the intention of deriving a profit, by means of the Rogers name, from the reputation built up by many years of business activity by the predecessors of the complainant. Such a case is not like that of a natural person using his own name. It is more nearly like the case of a natural person who voluntarily selects a name for his business which may enable him to profit by another's trade reputation.

In our judgment, the law was accurately stated by Judge Wallace in the R. W. Rogers Case, 70 Fed. 1017, 17 C. C. A. 576. In his language: "A body of associates who organize a corporation for manufacturing and selling a particular product are not lawfully entitled to employ as their corporate name in that business the name of one of their number, when it appears that such name has been intentionally selected in order to compete with an established concern of the same name, engaged in similar business, and divert the latter's trade to themselves by confusing the identity of the products of both, and leading purchasers to buy those of one for those of the other. No person is permitted to use his own in such manner as to inflict an unnecessary injury upon another. The corporators chose the name unnecessarily, and, having done so for the purpose of unfair competition, cannot be permitted to use it to the injury of the complainant." This rule is sustained by the later cases in the federal courts. Garrett v. T. H. Garrett Co., 78 Fed. 472, 24 C. C. A. 173; Bissell Chilled Plow Works v. Tom. Bissell Plow Co. (C. C.) 121 Fed. 357; Wyckoff, Seamans & Benedict v. Howe Scale Co., 122 Fed. 348, 58 C. C. A. 510. It was adopted in Connecticut in one of the early cases on this subject (Holmes, Booth & Haydens v. Holmes, Booth & Atwood Manufacturing Co., 37 Conn. 278. 9 Am. Rep. 324), and is now established in New York (De Long v. De Long Hook & Bye Co. [Sup.] 35 N. Y. Supp. 509; Chas. H. Higgins Co. v. Higgins Soap...