Wormser v. Levy — 35 N.Y. St. Rep. 78

Majority

p. 78

Leopold Wormser et al., App’lts, v. Isaac Levy, Resp’t.

(New York Superior Court, General Term,

Filed January 5, 1891.)

Headnote

Trade names—Restraint oe use oe similar words.

Defendant and his partners in 1880 adopted the name of the “Westchester Clothing Co.,” which was changed to “ New York & Westchester Clothing Co.” In 1881, plaintiffs adopted the name of the “Harlem & Westchester Clothing Co.” Held, that plaintiffs were not entitled to prevent the use by defendant of the word “Westchester,” especially as it appeared that they have allowed snchuse for seven years without objection or protest, although in direct competition for a part of the time.

Appeal from judgment entered upon a decision of the court at special term.

Edward W. S. Johnston, for app’lts ; Otto Horwitz, for resp’t.

The defendant testified positively that he and his brother did business at his present place of business in the year 1878 as “The Westchester Hat Company;” that subsequently, in the year 1880, they started a store at 138 Ewen street, Williamsburgh, and that that business was carried on under the name of “The Westchester Clothing Company,” and his testimony was corroborated by his brother and others.

While it cannot be said that their evidence is free from criticism, the trial judge having heard the testimony and seen the witnesses, his findings of fact cannot be disturbed.

The trial judge found as follows:

“ Y. The defendant, in the year 1878, associated with himself in his said business his brother Louis Levy, and thereupon an addition was made to said business of dealing in hats under the

p. 79

name of ‘ The Westchester Hat Company,’and the business was carried on, and such name used for a few months, when the hat business was discontinued.

“ VI. The defendant, in the year 1880, formed a co-partnership with his brother Louis Levy and one Jacob Bach, who thereupon •opened a retail clothing business at 138 Ewen street in the city of Brooklyn, New York, and that said parties at thnl time began the use of the name ‘Westchester Clothing Company ’ in the canying on of the said business.

“VIII. The defendant has had, since 1880, couspicuous signs in and about his place of business at Ho. 2714 Third avenue, Hew York city, containing the words New York & Westchester Clothing Company,’ and his business, which was, on or about the year 1882, enlarged to take in three stores, has been from that time until the present advertised in the Westchester Times newspaper, and has become well known to the residents of what was formerly Westchester county under said name.”

The name of the “Harlem & Westchestei Clothing Co.” was not •adopted by the plaintiff until October, 1881. It is clear that the plaintiff cannot prevent the use by the defendant of the name “ Westchester,” when it was adopted and used by defendant as the name under which his business was carried on before it was adopted by the plaintiff.

The case from the plaintiff’s standpoint does not present a strong claim for equitable relief. The stores of the plaintiffs and defendant are more than a mile apart. The names adopted are not alike, one being the “Harlem & Westchester Clothing Company,” and the other the “New York & Westchester Clothing Company.” Heither are manufacturers of goods; there is no question of trade mark, and according to plaintiffs’ own evidence the defendantwas using this title within a short time after the plaintiffs adopted the name which they seek to protect, and the plaintiffs have allowed, without objection or protest, the defendant to use the name for upwards of seven years, although for a time having a branch store directly opposite the defendant’s store, and being thus competitors in business. All this tends to show an acquiesence in the use by the defendant of the name adopted by him. It is not, therefore, necessary to determine the interesting question as to whether or not a party can, by adopting a geographical name as the name under which he does business, acquire such a property right to use that name as to prevent others from using it in any combination for the same purpose.

I think the judgment was right and should be affirmed, with •costs.

Sedgwick, Ch. J., and Freedman, J.. concur.