Marcus Ward & Co. v. Ward — 40 N.Y. St. Rep. 792

Majority

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Marcus Ward & Co., Limited, App’lt., v. William H. Ward and R. Ward Carroll, Resp’ts.

(Supreme Court, General Firm, First Department,

Filed October 16, 1891.)

Headnote

1. Trade names.

A person may use -his own name in a business or state that he is a certain person’s son, or that he is late of a firm the good will of the business of which he has sold.

2. Trade-mark—Symbols to show size of paper.

A combination of words, letters, figures and symbols intended only to indicate the size or quality of paper or other articles does not constitute a trade-mark.

3. Sale—Of business—Vendor may solicit patronage.

A person who has sold his business and the good will thereof to another, in the absence of an express agreement to the contrary, may lawfully apply to any of the customers of the old business and ask them to continue their custom with him.

Appeal from a judgment rendered at special term in favor of the defendants.

Delos McCurdy, for app’lt; John Nolman, for resp’ts.

I think this case was rightly decided at the special term.

The litigation grows out of the competition between the plaintiff corporation and the defendants in the business of manufacturing writing paper and stationery. Since 1883 the plaintiff has been a limited corporation organized under the British law, and carrying on business in Belfast, London and New York. It was the successor in business of a pre-existing firm known as Marcus Ward

p. 793

& Co., in which firm the defendant William H. Ward had been a co-partner. The firm transferred to the corporation its property, business and good will, and the defendant William H. Ward received from the corporation in payment for his interest in the firm an amount of stock proportionate to the amount of that interest. For a number of years the defendant William H. Ward was a director in the plaintiff corporation, but disagreements arose between him and some of the other directors and he retired from office* and in May, 1888, entered into partnership with the defendant R. Ward Carroll, forming a firm known as William H. Ward & Company, for the purpose of manufacturing, importing and selling linen writing paper and stationery in Belfast, London and New York.

In the course of the business thus started by the defendants’ firm the defendants have used the expression, Marcus Ward’s Son, upon some of the writing paper which they put upon the market. They have also offered for sale, and sold, a kind of paper which they have called Old English vellum, contained in boxes upon which has appeared the symbol B. 12. They have used upon their business cards and bill heads the inscription: “William H. Ward & Co., late of the firm of Marcus Ward & Co.,” and they have solicited business from the stationery trade in the city of New York, from persons among whom are included former customers of the plaintiff corporation.

Of these several acts the plaintiff complains in the present suit and asks that the defendants be enjoined from using or displaying the name or designation “ Marcus Ward’s Son,” or the expression “ late of the firm of Marcus Ward & Co.,” upon any signs, cards, bill heads or stationery; that they also be restrained from using any of the trade letters or numbers heretofore used by the plaintiff ; and that they be prohibited from, in any manner, soliciting business from the plaintiff’s customers under any pretense that they are connected with the plaintiff, or any representation that they have been connected or associated with the late firm of Marcus Ward & Co.

The proof on the trial failed in each instance to establish facts sufficient to warrant the court in granting the relief prayed for by the plaintiff. '

The defendant, William H. Ward, is in fact a son of the late Marcus Ward, and had a perfect right to represent himself as ■such. In the agreement which transferred the business of the late firm of Marcus Ward & Co. to the plaintiff corporation known as Marcus Ward & Co., Limited, there was no covenant or engagement on the part of the vendors not to engage in the same business. The defendant, William H. Ward, was therefore entirely at liberty to organize a new firm with his co-defendant when he ■could no longer get on harmoniously with the directors of the ■corporation and found it necessary or expedient to go into business for himself. He was only stating the truth when he described himself as Marcus Ward’s Son, and as late of the firm of Marcus Ward & Co. The exhibits which have been submitted to the

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court as a part of the appeal book show that there is no such resemblance between the marks used by the plaintiff and the marks used by the defendants as to be likely to deceive any one or to lead a person desiring to purchase the plaintiff’s goods to accept those of the defendants by mistake.

This is true not only of the water-marks on the writing paper, but of the devices and decorations upon the boxes in which the different sorts of paper are offered for sale. Indeed the distinction is so manifest upon a mere cursory inspection as to indicate that considerable pains were taken on the part of the defendants not to imitate the plaintiff’s stationery in any way which would be likely to mislead the public. Furthermore, there is absolutely no evidence that any'purchaser, or intending purchaser, ever was deceived or mistook the. defendants’ goods for those of the plaintiff.

As to the use of the symbol E. 12, it appeared that it was merely a private mark used for office convenience, and that its meaning was unknown to the stationery trade. It was employed only to indicate a particular size of paper. Such a combination used for such a purpose does not constitute a trade-mark. There can be no right to an exclusive use of any words, letters, figures or symbols which have no relation to the origin or ownership of goods, but are intended only to indicate their- dimensions and quality. Amoskeag Manuf. Co. v. Spear, 2 Sandf., 599 .

Finally, as to the complaint that the defendants solicited business from former customers of the plaintiff. It was formerly held in England that although the vendor of the good will of a business might, in the absence of an express agreement to the contrary, carry on the same business wherever he pleased, and solicit customers in any public manner, he could not lawfully apply to any of the customers of the old business, asking them to continue their custom with him rather than deal with the vendees. Labouchere v. Dawson, L. R., 13 Eq., 322: This doctrine, however, no longer prevails. It was declared to be incorrect by a majority of the court of appeal in Pearson v. Pearson, L. R., 27 Chan. Div., 145, and was rejected as no longer the law by Mr. Justice Stirling in the later case of Vernon v. Hallara, L. R., 34 Chan. Div., 748.

There was no basis in the proof for any finding that the defendants had appropriated any trade-mark belonging to the plaintiff, or been guilty of any fraud, misrepresentation or deception, or had exceeded their legal rights in soliciting custom. The complaint was, therefore, properly dismissed, and the judgment in favor of the defendants should be affirmed, with costs.

Van Brunt, P. J., concurs.