Weiss v. Shop.

• Decision Date: 29 January 1946
• Docket Number: 148/614.
• Citation: 45 A.2d 688
• Parties: WEISS v. STORK & GIFT SHOP.
• Court: New Jersey Court of Chancery

45 A.2d 688

WEISS

v.STORK & GIFT SHOP.

148/614.

Court of Chancery of New Jersey.

Jan. 29, 1946.

Suit in equity by Gertrude R. Weiss against the Stork & Gift Shop, a corporation, for injunction against unfair competition by use of a portion of complainant's trade name.

Decree for complainant.

Syllabus by the Court.

1. The law encourages fair, open, and honest competition, but it interdicts a merchant from taking a fraudulent advantage of his rivals by dealing under false colors and selling his goods as those of his competitors.

2. Rival merchants have no right, by imitative devices, to mislead prospective purchasers into buying their merchandise under the impression that they are buying that of their competitors.

3. The law guards the trade name and good will of a merchant, and thereby the public, against unlawful injury.

4. In a suit to enjoin an alleged violation of complainant's prior right to the use of a trade name, defendant's intent to deceive the public or injure the complainant is not a prerequisite to relief; the consequences of defendant's acts, and not the motive for them, determine whether the court will interfere.

5. If an interfering trade name is actually misleading, intention to mislead will be conclusively presumed.

6. The injunctive powers of the court are brought into activity whenever it is shown that a complainant's trade is in danger of harm from the use of his trade name, by defendant, in such a way as is calculated to deceive the public into the belief that defendant's affairs, in the respect complained of, are those of complainant.

7. A common, generic, or descriptive word or term, may be usage acquire a secondary, special, or trade meaning in respect to the goods, business or services of the user, as distinguished from its primary, common or general meaning, so as to justify restraint against the subsequent unfair or piratical use thereof by another.

8. The right to an injunction in unfair competition cases necessarily depends largely upon the special circumstances of the individual case.

9. Although complainant has no copyright on the dictionary, or any part of it, he can exclude a defendant from a part of the free field of the English language, even from the mere use of generic words, unqualified and unexplained, when they would mislead complainant's customers to another shop.

10. Where specified descriptive words have been before the public so long and to such an extent as that it would be unjust for anyone to simulate them and thus enable his goods to pass off as the goods of another, equity will afford relief by way of injunction against the simulation.

11. When a trade name has acquired significance in the mind of the public who understand it as a designation or symbol applying to one's business, equity will relieve against the subsequent use by another of a name so similar as to confuse and mislead the public to the first user's injury.

12. One of the elements which enters into a consideration of the subject of unfair competition is the necessity, or nonnecessity, for the employment of the disputed words by the defendant.

13. Neither actual confusion nor actual fraudulent intent to confuse need be shown where the necessary and probable tendency of defendant's conduct is to deceive the public and pass off his goods or business as and for that of complainant.

14. The test of the tendency to deceive is whether the use, by the defendant, of the words in dispute is likely to deceive ordinary purchasers buying with such care as would usually be exercised in such transactions-a nice discrimination is not expected from the ordinary purchaser.

15. In the circumstances of the instant case, complainant having an established business under the name of ‘Broadway Juvenile Shop’, is entitled to protection by injunction against defendant's use of the name ‘Juvenile Shop’.

Meyer L. Sakin, of Camden, for complainant.

Benjamin Asbell, of Camden, for defendant.

WOODRUFF, Vice Chancellor.

Complainant seeks an injunction to protect her established trade name of ‘Broadway Juvenile Shop’. She charges unfair competition. Complainant's retail business in infants' and juvenile wear was established at 211 Broadway, Camden, New Jersey, in 1931; on December 9, 1931 she filed, in the office of the Clerk of Camden County, a certificate of the adoption of the name under which she was doing business.

Ever since the establishment of her said retail store, complainant has used and publicized her trade name. From 1931 until 1933 her store was at 211 Broadway, from 1933 until April 23, 1945 at 215 Broadway, and from April 23, 1945 until the present at 703 Broadway. For the past six years she has also operated a retail store at Bridgeton, New Jersey, and she now designates both stores as ‘Broadway Juvenile Shops'.

Complainant's stores at 211 and 215 Broadway, in a retail shopping district, were most advantageously located. In the same city block, and on the same side of Broadway, there is a well known and well patronized moving picture theatre, the Grand. This theatre is open day and evening, and in the evening the front of the theatre is brilliantly lighted.

From 1931 until the present complainant has continuously advertised her business under the name ‘Broadway Juvenile Shop’ or ‘Broadway Juvenile Shops'.

Large signs bearing one or the other of these names have been maintained on the front of her stores; her business stationery, price tags, gift articles, and delivery boxes and bags have borne these names; she has regularly advertised in the Camden Daily Courier, the Bridgeton Daily News and other newspapers, and many times a dany thru ‘spot’ announcements over Camden's municipal radio station, and, by billboard, circulars and other media, always using these names. Complainant has also frequently conducted prize contests, open to the public, in her stores and in these names. Her average expenditure with the Camden Daily Courier for adveritising has been $1000 per year, and her husband (who assists her in her business) testified that she has spent at least $25,000 in advertising her trade name since she established her first Camden store in 1931.

About two years ago a retail store was opened at 204 Broadway, Camden, almost directly opposite the complainant's store at 215 Broadway. A large sign over the show windows and the entrance identified the new store as ‘The Stork & Gift Shop’. The type of merchandise sold there is indicated by defendant's trade name,-babies' wear and gifts; juvenile wear was not sold. Sometime prior to April 23, 1945 the defendant was incorporated and it took over The Stork & Gift Shop; still juvenile wear was not sold there. But, at or about the time the complainant moved her store from opposite the store of the defendant to 703 Broadway, some five blocks south, the defendant began to stock and to promote the sale of juvenile wear. Also, the defendant caused two new signs to be painted on and across the top of its show windows; the words chosen by it were the last two words of complainant's trade name, ‘Juvenile Shop’.

When, on April 23, 1945, complainant moved her store from opposite that of the defendant she had been established in that city block for thirteen years. Just six weeks later, on June 4, 1945, the complainant observed that the ‘Juvenile Shop’ signs were being painted upon the show windows of the defendant's store. She immediately advised the defendant by letter that she objected to the use of these words, and considered the display an infringement upon her trade name. Thru its attorney, the defendant replied asserting that it had a right to use the words and display the signs. An officer of the defendant testified that the signs had been ordered quite some time before they were painted but that the painter could not do the work until June 4, 1945. There was also some testimony relative to an attempted compromise between counsel representing the parties on the words to be used and displayed by the defendant. The complainant, however, objected to the use of the word juvenile in defendant's signs and this suit was instituted. The defendant continues to maintain the two ‘Juvenile Shop’ signs upon the show windows of its store.

Defendant did not substitute the ‘Juvenile Shop’ signs for its large ‘Stork & Gift Shop’ sign. It displays both signs, so that to a person shopping on Broadway the signs might well indicate that two shops were accommodated in defendant's building. United Cigar, etc., Co. v. United Confectioners, Err. & App., 92 N.J.Eq. 449, 450, 113 A. 226, 17 A.L.R. 779. The new signs are made conspicuous in the evening because of the bright lights behind them in the defendant's store windows; its original sign above its store, ‘The Stork & Gift Shop’ is not directly lighted and would not, in my opinion, attract the attention of the ordinary Broadway shopper after dark.

Defendant's buyer and store manager was quite frank in her admissions relative to the situation which developed after the complainant moved her store. She testified that on many occasions individuals entered the defendant's store and asked if it was the ‘Broadway Juvenile’. She knew, she said, that those persons were referring to complainant's ‘Broadway Juvenile Shop’. She knew that the complainant had moved to 703 Broadway. What she did was this: ‘A. I have instructed all employees to tell them we are the Stork and Gift Shop, that they are in the Stork and Gift Shop, but that we carry juvenile clothing, and we try to sell them our merchandise, but we tell them the Juvenile Shop had moved down to the 700 block and we were the Stork and Gift Shop.’ (Italics mine.) These questions were also asked, and she gave these answers:

‘Q. Have you personally told people to go down to 703 Broadway? A. I certainly have. ‘Is this the Broadway Juvenile?’ ‘No, the Broadway Juvenile moved to 703’, or ‘the 700 block. Can we help you’, and try to sell them our merchandise, but we do tell them the...