Koehler v. Sanders — 15 N.Y. St. Rep. 293

Majority

p. 293

Joseph W. Koehler and another, Resp’ts, v. Edward Sanders and another, App’lts.

(Supreme Court, General Term, First Department,

Filed March 28, 1888.)

Headnote

Injunction—Rights in words.

The plaintiffs adopted the firm, name of “The International Banking Company,” and procured an injunction restraining the defendants from using the firm name of the “International Bank of Edward Sanders &Co.” Meld, 1. That the word “ International ” was a generic term, and could not he exclusively appropriated by priority of adoption. 3. That the plaintiffs not being a corporation, the use of the word “The International Banking Company” was an imposition upon the public, and as the plaintiffs did not come into court with clean hands, they were not entitled to any relief. 3. That the fact that it was an innocent misrepresentation, and had not misled anybody, made no difference.

Appeal from a judgment of the special term perpetually enjoining the defendants from using, or permitting, or causing to be used, the words “ International Bank,” or any words similar thereto, or any translation or transposition of such words, etc.

Benno Loewy, for appl’ts; Ira Leo Bamberger, for resp’ts.

Although we might well base our decision in this case upon the evident fact that the plaintiffs have adopted the name of the “ International Banking Company ” for the purpose of deceiving the public into the belief that such '‘International Banking Company” is a corporation organized under the laws of this state for banking purposes, and that persons dealing with it have that security which the law exacts from such corpopations, and that therefore the plaintiffs do not come into court with clean hands, and the court ought not to lend its aid to a perpetration of

p. 294

such, imposition, it may be proper to consider the question involved upon its merits. ,

That rights may be acquired in words in connection with a trade or business where such words are arbitrary and have no signification in respect to the nature, kind or quality of business or goods sold, is well settled, but words having relation to the business cannot be. seized upon and appropriated.

None of the words sought to be protected are arbitrary. The plaintiffs deal in foreign and domestic securities with persons mostly of foreign birth.

They represent themselves as doing a banking business, and therefore they attempt to describe their business by the use of the words ‘ ‘ International Banking. ” ' ‘ International” because they deal in both foreign and domestic securities, and with foreign customers. “ Banking,” because they do a business such as is usually included in a banking business.

These words are clearly descriptive, and were intended so to be, of the business claimed to be conducted, and being such they cannot be appropriated.

If they are not descriptive, then they were used for the purpose of deceiving the public into the belief that such was the nature of the business carried on, and as has before been said, the court should not lend its aid in order that the plaintiffs may have the exclusive right to continue this imposition.

_ None of the cases cited in any way countenance the exclusive right of the plaintiffs to the use of the words of the character sought to be protected in this action.

These words, although they may have been in common use, were used arbitrarily in the trade mark protected, and in-no way were descriptive of the kind or quality of the goods or business to which they were applied. Upon the other hand, as has been seen, the words used by the plaintiffs were plainly intended to be descriptive of the business supposed to be done by the plaintiffs.

The judgment appealed from should be reversed, and a new trial ordered, with costs to the appellants to abide the event.

Brady and Daniels, JJ., concur.