Summary
In Corning Glass Works v. Corning Cut Glass Co. (197 N.Y. 173), our Court of Appeals stated the rule at page 178, where it held: "So far as the plaintiff claims any exclusive right to the use of the name of the city in its title, it is only necessary to say that it could acquire no property in it, which would entitle it to debar other manufacturers located there from using it; provided it is not used in the same verbal connection, or in such wise as to leave the business indistinguishable."
Summary of this case from Kreisberg v. Wakefield Co.Opinion
Argued December 6, 1909
Decided January 4, 1910
Frederick Collin for appellant. James O. Sebring for respondents.
The dissent in the Appellate Division was upon the ground that the name adopted by the defendant is so similar to that of the plaintiff, as to be calculated to deceive and, in connection with the business carried on in the same locality, to amount to a fraud upon the latter. I think that the case has been correctly decided and that its facts do not afford support for the charge that the defendant has brought itself within the inhibition, either, of the rule established by the decisions, or of our statutory provision, which forbids the adoption, in a certificate of incorporation, of the "same name as a corporation authorized to do business under the laws of this state, or a name so nearly resembling it as to be calculated to deceive." (Gen. Corp. Law, sec. 6; Cons. Laws, p. 1319.) The claim of the plaintiff to equitable relief by way of the injunction demanded is placed upon this ground: that the similarity between the names "is liable to produce confusion of business and to mislead those transacting business with either corporation", and "to create unfair trade". It is argued, in its behalf, that the defendant should be restrained from using the word "Corning", as part of its corporate name, and that its adoption was "the invasion of a legal right, which entitles the plaintiff to the injunction without regard to the question of intent, or damage." The difficulty with the plaintiff's case is that it has not been able to show that its business is interfered with by any competition on the part of the defendant. It its claim for relief is rested upon the notion that there is competition by the defendant, actual, or to be apprehended, with the business of the two firms, which take from it the glass "blanks" required for the making of cut glass, I think there are two answers. In the first place, it is inconceivable that it may maintain an action for the alleged protection of some of its customers, who are not complaining, and, in the second place, as matter of fact, these customers are found not to have been interfered with by any competition of the defendant. In result, the plaintiff's claim is reduced to this: that it is entitled to preventive relief, merely, because of a similarity in names, which is liable to create unfair trade, by reason of a possible confusion in the minds of those transacting business with either corporation, to its probable injury. If that were borne out by the facts, doubtless, the plaintiff would have a standing in court to protect itself against injury, reasonably, to be anticipated. If it be made to appear that there is real ground for a present apprehension of a future injury to a complainant's property, a court of equity will entertain the suit to quiet that apprehension. The defendant would have no right to establish itself as a rival manufacturer and, by imitation of name, to mislead the public into buying its manufactures, under the impression that they were buying those of the plaintiff. But that is not this case; for, not only, is there lacking the element of identity in the business carried on, but the defendant's name, clearly enough, distinguished the kind of article it would offer to the trade. The evidence shows that the manufacture of cut glass is a distinct business; in which the plaintiff had not been, and was not, engaged. Between the two concerns there has been no competition, nor rivalry; because each produces a distinct class of ware. So far as the plaintiff claims any exclusive right to the use of the name of the city in its title, it is only necessary to say that it could acquire no property in it, which would entitle it to debar other manufacturers located there from using it; provided it is not used in the same verbal connection, or in such wise as to leave the business indistinguishable. The name "Corning" identifies no particular business; but, at most, would suggest to the mind a great center of the glass industry. The provision of our statute, in prohibiting the adoption of a name nearly resembling that of an existing corporation, and the rule of law, underlying the intervention by courts to restrain the simulation by one corporation of the name of a prior corporation, find their application, when it is plain that the business of the prior corporation would, or might, be obtained and thus the perpetration of fraud be made possible. ( Chas. S. Higgins Co. v. Higgins Soap Co., 144 N.Y. 462; Lee v. Haley, L.R. [5 Ch. App.] 155.) In Lee v. Haley, the plaintiffs claimed to have a property in the name of The Guinea Coal Company and sought to restrain the use by the defendant of the same name. It was held that the plaintiff had no property in the name, and that "the principle upon which the cases upon this subject proceed is, not that there is property in the word, but that it is a fraud on a person who has established a trade, and carries it on under a given name, that some other person should assume the same name, or the same name with a slight alteration, in such a way as to induce persons to deal with him in the belief that they are dealing with the person who has given a reputation to the name." The law of unfair competition rests on the principle that no person has the right to sell his own goods as those of another by misleading the public. The principle is one, primarily, to protect the party complaining and, but incidentally, the public who may deal with either.
The case in this court, which I have cited above, of Chas. S. Higgins Co. v. Higgins Soap Co., and upon which the dissent below has been based, differs in very material respects from the case before us. There, while the plaintiff's name did not describe its business, its product had come to be known to the trade as "Higgins Soap," and to the public the name of the product identified the manufacture of the plaintiff. The company was spoken of in the trade, to some extent, as the "Higgins Soap Company". For fifty years the manufacture of Higgins Soap had been carried on; at first by the father of Charles S. Higgins and then by the plaintiff, to which the business had been transferred. Among the labels, transferred to and used by the plaintiff, was one containing the words "Higgins Soap" and the reputation of "Higgins Soap" applied to, and designated to the trade, the soap manufactured by the plaintiff and its predecessors. Shortly after the plaintiff corporation had been organized, Charles S. Higgins, its president, severed his connection with it and formed a new corporation, under the name of the "Higgins Soap Company", and the action was brought to restrain the use of that name. In this court, the plaintiff's claim was upheld, and very properly; inasmuch as there had been a clear invasion of its rights, in producing confusion in the trade to its probable injury. "As between these parties", as it was observed in the opinion, "the case is, we think, the same as if the word `soap' was written into the plaintiff's name and its corporate designation was `Chas. S. Higgins Soap Company'." (p. 471.) The rule was formulated, in our decision, that "whether the court will interfere in a particular case must depend upon circumstances; the identity or similarity of the names; the identity of the business of the respective corporations; how far the name is a true description of the kind and quality of the articles manufactured or the business carried on; the extent of the confusion which may be created or apprehended, and other circumstances which might justly influence the judgment of the judge in granting or withholding the remedy." (p. 469.) Applying that rule, which was applied with perfect propriety to the circumstances of that case, to the facts of the present case, we are at no loss to perceive that the names of "Corning Glass Works" and of "Corning Cut Glass Company" are not similar to the extent of producing confusion, when intelligently observed, and the law does not justify interference in behalf of ignorant, or careless, persons. The fact is patent, upon the evidence, that there had not been, and could not be, such confusion in the trade, with respect to the products of the two concerns, as that, for instance, the defendant would be asked for common glass and glass ware. There is no competition between them and each seeks, and caters to, a different class of customers. The plaintiff was not known to the trade as a manufacturer, or seller, of cut glass; while that was the defendant's sole business. As it was said in Howe Scale Co. v. Wyckoff, Seamans Benedict, ( 198 U.S. 118), "Courts will not interfere where the only confusion results from a similarity of names and not from the manner of the use."
Enough has been said, in connection with the excellent and clear opinion of the referee, to justify the conclusion that the defendant, in the adoption of its corporate title, has not rendered itself amenable to the charge of seeking to mislead the public into the belief that its wares were the products of the plaintiff's manufacture, to the latter's serious damage.
I, therefore, advise the affirmance of the judgment.
CULLEN, Ch. J., HAIGHT, VANN, WERNER, WILLARD BARTLETT and HISCOCK, JJ., concur.
Judgment affirmed, with costs.