Rorke v. Societe Des Huiles D'Olive De Nice — 43 N.Y.S. 548

Majority

p. 548

RORKE v. SOCIETE DES HUILES D’OLIVE DE NICE et al.

(Supreme Court, Appellate Division, First Department.

February 5, 1897.)

Headnote

Injunction Pendente Lite—Sufficient Cause.

An injunction pendente lite against the use of a trade-mark should be granted where plaintiff’s ownership is established as against one defendant by a former adjudication, and as against the other, who was his former partner, by plaintiff’s purchase of the trade-mark at an auction sale of the assets of the firm.

Appeal from special term, New York county.

Action by James Rorke against the Société des Huiles d’Olive de Nice and another for ah injunction pendente lite. From an order denying plaintiff’s motion for the injunction, he appeals. Reversed.

Argued before VAN BRUNT, P. J., and WILLIAMS, PATTERSON, O’BRIEN, and INGRAHAM, JJ.

G. A. Strong, for appellant.

George Putnam Smith, for respondents.

This is an appeal from an order denying the plaintiff’s motion for an injunction to restrain the defendants from using a trade-mark, or label, the ownership of and the exclusive right to use which is claimed by the plaintiff. The court below refused to grant an injunction pending suit, on the ground that the plaintiff had not made out a sufficient case for an injunction, it appearing that all the equities were denied in the papers used in opposition to the motion.

An examination of the record satisfies us that the injunction should have been granted. It was incumbent upon the plaintiff to show, in order that he might be entitled to this injunction, that he was in fact the owner of the trade-mark, entitled to its exclusive use, and that the defendants were wrongfully and to his detriment using or imitating that trade-mark, or label. Those things were abundantly shown. The plaintiff’s ownership was not only made out by independent or original proof, but as between him and the defendant society it had been established by an adjudication-of this court. The facts as they appear in this connection are the following, viz.: The plaintiff and the defendant Dwyer, prior to October, 1893, composed the firm of T. N. Dwyer & Co. They were merchants in the city of New York, and dealers, among other things, in olive oil imported from Nice, in France. In the conduct of their business they had designed and used a trade-mark, or label, a specimen of which is set out in the complaint. That label was only used as designating goods imported and sold by that firm. The trade-mark, or label, did not belong to the manufacturers or exporters of the goods. Those goods were not sold by T. N. Dwyer & Co. as the agents of the exporters, but that firm bought and paid for, under certain contracts, the goods they imported and sold in this country. Originally, they bought goods of one Normandin & Co., then of one Audemard; afterwards of the Société des Huiles,

p. 549

etc. The oil, when purchased in France, was bottled by the manufacturers, and the label designed and used by Dwyer & Co. seems to have been put upon the bottles in France by the manufacturers of the oil; and, when Dwyer & Co. ceased to buy oil of Normandin & Co., labels in the possession of, but not used by, the last-named firm were sent to Audemard, and while Dwyer & Co. carried on business with him such labels were put on the bottles bought from him, and when they ceased dealing with him, and began to transact business with the société, labels of Dwyer & Co. were put on the bottles by the société, but Dwyer & Co. always paid for them. After October, 1893, difficulties arose between Dwyer and Rorke, and a bill was filed to dissolve the partnership existing between them. At that time they were importing the oil of the société under a written contract. In that action receivers were appointed, by consent, and those receivers were authorized to sell all the assets and property of the firm, among such assets and property being the trade-mark, or label, and the contract with the Société des Huiles. The sale was at anction, and consequently was open to competition; but in the nature of things the trade-mark and the label were property of such a character that competition would necessarily be restricted to the two partners of the firm. Rorke bought in the trade-mark and label, and the fact that Dwyer allowed him so to do is acquiescence on his part in the purchase made by his former partner; and that is sufficient to estop Dwyer from making any claim to a right to use that trade-mark adversely to or in competition with Rorke, for in the adjustment of the co-partnership business by the receivers he (Dwyer) received whatever benefit may have been derived from that transaction. But as to the société the plaintiff’s ownership is established by an adjudication of this court. That société brought an action against Rorke to restrain his use of the trade-mark and label. Issue was joined', Rorke setting up his right and title. The société claimed that it owned the trade-mark, and that Dwyer & Co. were merely its agents, and used the trade-mark as its agents.

On the trial of the cause the court found, as matter of fact, that the société was not the owner; that Dwyer & Co. did not use the trade-mark, or label, as its agents, but, on the contrary, that it was the property of that firm. The judgment of the trial court was affirmed by the appellate division, and that question respecting the ownership was set at rest by the adjudication in the action referred to, and is conclusively established so far as any matter litigable between the parties to this action is concerned. It is asserted, however, by the defendants, that the label and trade-mark were originally devised only to designate oil produced and supplied by particular shippers, namely, Audemard, and, afterwards, the société; and that, by virtue of the relations established between the société and Dwyer & Co., the plaintiff must be restricted in the use of his property right in the label and trade-mark to oil manufactured or produced by the société. That position is not maintainable. The label and trade-mark were not designed to indicate any particular manufacture of oil, except such as was produced at

p. 550

Nice, in France. Dwyer & Co. devised and used the trade-mark long before purchases of oil were made either from Audemard or the société, and there was nothing, so far as these papers show, in the contracts either with Audemard or the société, which limited Dwyer & Co. to the use of the labels or trade-mark upon oil produced by them only.

It does not lie with the société to say that Rorke cannot use this label and trade-mark in his business as a merchant selling olive oil produced at Nice. It declines and refuses to sell him oil, although it was notified that he was the purchaser of the contract on the sale of the assets of the co-partnership of which he was a member.' We do not mean to say that the société was bound to sell him oil, but it cannot be heard to say that Rorke cannot use the trade-mark and the label which he purchased; and Dwyer is estopped from so saying, because of the title and ownership which was conferred upon the purchaser by the assignment made by the receivers, and from which, presumably, he received whatever benefit may have arisen out of the payment of the purchase money. Nor is there anything at all in the claim that the plaintiff is making false representations or deceiving the public in the use he makes of the label and trade-mark. There is nothing whatever to indicate on the face of the label that Rorke is selling the oil of the société. Its name does not appear in any way on the label or trade-mark. On the contrary, it plainly appears that it is not the oil produced by the société that is sold by the plaintiff, but the oil of one Louis Caisson & Co. The equities of the case, notwithstanding the defendant's denial, are altogether with the plaintiff, and the court below erred in refusing to grant the injunction applied for.

The order must be reversed, with $10 costs and disbursements, and the motion for an injunction granted, with $10 costs to abide the event. All concur.