
    SAMUEL a. BERGER.
    
      Supreme Court, First District;
    
    
      Special Term, December, 1856.
    Trade Marks.—Injunction.
    In what cases and upon what principles an injunction will lie, to restrain the use of a trade-mark.
    Motion for an injunction.
    This action was brought by Morris L. Samuel and Edwin M. Dunn against Albert Berger and others. The complaint sought an injunction to restrain defendants from the use of a trade-mark which plaintiffs claimed as assignees ; and the plaintiff now moved for an injunction pending the suit. Other facts, which appeared upon the motion, are stated in the opinion.
    
      David Dudley Field, for the motion.
    
      E. W. Stoughton, opposed.
   „Davies, J.—The

—The rule governing the interference of courts in this and like cases, is well laid down by Duer, J., in The Amoskeag Manufacturing Company a. Spear (2 Duer 607). He says:

“At present it is sufficient to say that in all cases where a trade-mark is imitated, the essence of the wrong consists in the sale of the goods of one manufacturer or vendor, as those of another; and it is only when this false representation is directly or indirectly made, and only to the extent in which it is made, that the party who appeals to the justice of the court can have a title to relief.”

Applying these principles to the facts in this case, we shall see that the plaintiffs invoke a rule of law which the defendants might claim to be applied to them, but which will not avail the plaintiffs.

The plaintiffs say that Brindle, as a watchmaker, had acquired a reputation as such, and that all watches manufactured by him were stamped with his name; that Sylvester J. Samuel purchased from Brindle the right to stamp Brindle’s name on watches manufactured by Samuel; and that Samuel assigned to the plaintiffs the right to stamp Brindle’s name on watches manufactured by them.

The defendants have on hand for sale the watches manufactured by Brindle and stamped with his name, and this court is called upon to restrain them by injunction from selling the genuine, and thus to protect the plaintiffs in selling the simulated article.

The plaintiffs ask the court to aid them in passing off upon the public watches manufactured by them, and held out to the public as made by Brindle, when, in truth, the watches made by Brindle, and stamped by him with his mark, are those which the defendants seek to sell.

If the defendants were seeking to make sale of watches manufactured by them as those manufactured by Brindle, and the right of the plaintiff to use his name as a trade-mark was clear, then the injunction should go; but they cannot call on this court to aid them in passing off the watches made by them as those manufactured by Brindle.

Another rule enunciated by Judge Duer, in the case above cited, is to be applied in this case. He says (2 Duer, 618) “ the rule is fully settled, and is recognized in nearly all the cases, that, in suits of this nature, an injunction is never to be granted in the first instance if the exclusive title of plaintiff is denied, unless the grounds upon which it is denied are manifestly frivolous. When the title is disputed, the course is to let the motion for an injunction stand over until the plaintiff has established his legal right in an action at law” (Partridge a. Welch, 2 Sandf. Ch. R., 622; S. C., 2 Barb. Ch. R., 101).

The case of Motley a. Downman (3 Mylne & Cr. 1), is in point. Then the court argued that the fraud, if any, was on the part of plaintiffs, who persisted in using a name which designated tin plates, manufactured at particular works, after they had ceased to occupy the same, and had removed to a distance of over forty miles, and established other works.

Lord Chancellor Cottenham thought the right so doubtful that he refused the injunction.

I am satisfied, from an examination of the cases on the subject of trade-marks, that in no case like the present has an injunction been issued, and to issue one in this case would be violating all the rules laid down in the books, as applicable thereto.

When the power of the court has been invoked, it has been to restrain the defendant from making his goods and selling them as and for the goods manufactured by the plaintiff, on the ground that such a fraud was an injury to the plaintiff, and tended to mislead and deceive the public.

No such case is presented, and the motion for injunction must be denied with costs.  