Koehler v. Sanders

• Decision Date: 07 October 1890
• Citation: 25 N.E. 235,122 N.Y. 65
• Parties: KOEHLER et al. v. SANDERS et al.
• Court: New York Court of Appeals Court of Appeals

122 N.Y. 65

25 N.E. 235

KOEHLER et al.

v.SANDERS et al.

Court of Appeals of New York, Second Division.

Oct. 7, 1890.

Appeal from order of the general term of the supreme court in the first judicial department, reversing judgment entered on report of a referee in favor of the plaintiffs, and granting a new trial.

The plaintiffs, partners, doing business in the firm name of the International Banking Company, in the city of New York, brought this action to restrain the defendants from using in their advertisements the name of ‘International Bank,’ upon the alleged ground that in doing so the defendants would thereby wrongfully infringe upon the plaintiffs' right to the exclusive use of the name so adopted as their trade-mark. The plaintiffs' firm is the successor of one which commenced business in the city of New York in the same name in 1874. And the defendants commenced business there in 1883, as partners, in the name of Edward Sanders & Co. They first used the name of International Bank in 1887, shortly before the commencement of this action. It was then included in an advertisement published in the German language in the New York Staats Zeitung, a German newspaper. The closing words of the publication, embracing those which constitute the alleged infringement, were in English, as translated at the trial, as follows: ‘All ready for the next drawings, 1st of February and 20th of February. Call on the International Bank of Edward Sanders & Co., 212 Broadway, corner Fulton street, New York city.’ The plaintiff's place of business was 207 Broadway, corner Fulton street, and their partnership name, of International Banking Company, was in English, while the other portions of their advertising circulars were in German. When the defendants' publication, before mentioned, appeared, the plaintiffs, by letter, charged the defendants with making use of the name ‘International Bank’ in fraud of the public, and to the prejudice of the plaintiffs, and advised them that they would be prosecuted unless they desisted. The defendants, by letter, in answer quite emphatically asserted the right ‘to use the name International Bank of Edward Sanders & Co.’ Thereupon this action was commenced.

Benno Loewy, for appellants.

Ira Leo Bamberger, for respondents.

BRADLEY, J., ( after stating the facts as above.)

The business of the parties was of like character, and consisted in dealing in foreign government bonds, mainly those of Germany, Austria, Italy, Russia, France, and Belgium. They purchased the bonds there, and sold them in this country, where their transactions were mostly had with persons speaking the German language. Among the inducements to purchase of the parties, as represented by their published circulars, were those that payments could be made in small installments, and that there was a chance by means of a system of lottery drawings in the countries issuing them to realize something in excess of the amount of the bonds by way of prizes or premiums. It has been held that this was not a lottery scheme within the statutes of this state, and, therefore, the sales made here were not invalid. Kohn v. Koehler, 96 N. Y. 362. The plaintiffs' claim to relief rests upon the alleged proposition (1) that they had acquired the exclusive right to the use of the term ‘International Banking Co.,’ which they had adopted as their firm name; or (2) that the alleged infringement by the defendants was for the purpose of deceiving people, and of inducing them to believe that the defendants' place of business was that of the plaintiffs, to the injury of the latter. The referee found that this name was adopted by the predecessors of the plaintiffs, and to whom the latter succeeded in the business, as ‘their copartnership trade-mark,’ which, ‘by constant advertising for a period of twelve years, has become of great value;’ and that in a spirit of rivalry, and to induce the public to believe that the defendants' place of business was that of the plaintiffs, the defendants infringed upon the plaintiffs' right to the exclusive use of the name so adopted by the latter as their trade-mark, by causing to be inserted in the New York Staats Zeitung an advertisement of securities sold by them, which were also sold by the plaintiffs, in the manner and form of their advertisements, and containing at the end the words in the German language, which translated into English meant, ‘Inquire at the International Bank of Edward Sanders & Co., 212 Broadway, corner of Fulton street, New York city.’ In the strict sense of the term, a trade-mark is applicable only to a vendible article upon which it is in some manner affixed or represented as a symbol to indicate the origin or ownership of the article on which it is placed; but the same rules for the protection against infringement are extended to names applied to other callings, or to places of business, as to technical trade-marks. Howard v. Henriques, 3 Sandf. 725; Manufacturing Co. v. Hall, 61 N. Y. 226. In referring to the principles relating to trade-marks, and upon which their efficiency as such depends, it may be observed that there is no exclusive right to represent by them an idea, nor can there be an exclusive appropriation of that which is descriptive of the articles to which they are attached, or that which indicates their ingredients, mode of composition, characteristic properties, quality, or nature. Morgan's Sons Co. v. Troxell, 89 N. Y. 292; Manufacturing Co. v. Spear, 2 Sandf. 599; Caswell v. Davis, 58 N. Y. 223. The word ‘international’ is a generic term, pertaining to relation between nations, and when applied to business or to transactions of private character it imports dealings of some sort in matters or with people of different nations, or which have some relation to them. It is in common use, and in its nature it is descriptive, and ordinarily characterizes the business to which it pertains, rather than its origin or proprietorship; and, so treated, the use of it cannot be exclusively appropriated by any party. This partnership name taken by the plaintiffs is apparently descriptive of a banking business, and indicates that it is in some sense international, and presumptively the name denotes the nature of the business. In that view it cannot have the character essential to a trade mark or to its exclusive use analogously to it. Taylor v. Gillies, 59 N. Y. 331;Baking-Powder Co. v. Sherrell, 93 N. Y. 331;Manufacturing Co. v. Trainer, 101 U. S. 51;Choynski v. Cohen, 39 Cal. 501;Burke v. Cassin, 45 Cal. 467. The well-known use of this word, as commonly used in its application to...