
    Max Gluckman and Gittel Gluckman, Appellants, v. Simon Strauch and Nechomer Globe, Respondents.
    
      Appeal on the judgment roll alone — relief against an infringement of a trade mark —not giren where false representations hare been made—what is not a false label.
    
    On an appeal, taken upon the judgment roll alone, from a judgment entered upon the decision of the court rendered after a trial at Special Term, the Appellate Division is required only to determine whether the conclusion of law of the justice at Special Term was justified or required by the findings of fact which he made.
    A court of equity will not afford relief against the imitation or counterfeiting of a trade mark if the plaintiffs have been guilty of any false representations with respect to a material fact in connection with the property or merchandise covered by the trade mark.
    In such an action it appeared that the plaintiffs, Gliickman & Son, were engaged in selling cigarette papers, and that the label on the papers, which they sought to have protected, bore the words “ Gliickman & Son, Sole Manufacturers, Paris.” The plaintiffs had no factory or place of business in Paris, but the cigarette papers were manufactured in that city especially for them and on their special order. No other firm or person could procure the papers and each separate sheet thereof contained the following water mark: “ Gliickman & Son, Pour la gloire, Papier Francais.” The paper was imported by the plaintiffs in large sheets which were cut up by them into convenient sizes, put into packages and then sold.
    
      Held, that the statement on the label ‘ ‘ Gliickman & Son, Sole Manufacturers, Paris,” was substantially, although not exactly, true, and that consequently such statement did not constitute a false representation of a material fact concerning the plaintiffs’ goods which would justify the court in refusing to afford the plaintiffs relief against a fraudulent imitation of the label.
    Appeal by the plaintiffs, Max Gluckman and another, from a judgment of the Supreme Court in favor of the defendants, entered in the office of the clerk of the county of Hew York on the 2d day of June, 1904, upon the decision of the court, rendered after a trial at the Hew York Special Term, dismissing the plaintiffs’ complaint.
    
      Frederick E. Anderson, for the appellants.
    
      S. K. Lichtenstein, for the respondents.
   Patterson, J.:

The appeal in this case comes before us on the judgment roll, and we are required only to determine whether the conclusion of law of the justice at Special Term was justified or required by the findings of fact he made. The relief the plaintiffs sought was a perpetual injunction to prevent the defendants from imitating or counterfeiting their trade mark and label. That trade mark and label are used in connection with cigarette papers sold by the plaintiffs, and the court has found as facts that the defendants have willfully, intentionally and continuously infringed the plaintiffs’ trade mark and package by producing a package having the same general appearance, with minor changes, and that the defendants’ package is so substantially like the plaintiffs in general appearance'as to be calculated to deceive purchasers into believing that the cigarette papers sold by the defendants are the product of the plaintiffs. The court also finds as matter of fact that the defendants have manufactured and sold cigarette papers put up in imitation of the plaintiffs with the actual intention to deceive, and that they have actually deceived the public, thereby inducing persons to purchase the defendants’ cigarette paper as the product of the plaintiffs. Here, therefore, is a clear and precise finding of gross fraud on the part of the defendants.

But it is urged that the plaintiffs are not entitled to relief in this ■ action because of alleged false representations as to a material fact printed upon the label which they seek to have protected. On that label the following words appear: “ Glückman & Son, Sole Manufacturers, Paris.” In connection with that statement or representation the trial court found that the cigarette papers of the plaintiffs were manufactured in Paris especially for the plaintiffs, on their special order, and that no other person or firm can procure the said paper and that each separate sheet contains a water mark as follows : Glückman & Son, Pour la gloire, Papier Francais.” The court found that the plaintiffs had no factory or place of business of their own in Paris; that the cigarette paper manufactured in Paris and imported by them is imported in large sheets which are cut up by them in sizes convenient for use by the consumer, put into packages and then sold. Upon these, which are the chief findings of fact, the court below held that the statement made by the plaintiffs on their cigarette papers amounts to a representation that they were the sole manufacturers thereof at Paris, France, and that it is a representation of a material fact in connection with the manufacture of the article or merchandise packed and marked by them as aforesaid; that such representation is false, and that solely by reason thereof the plaintiffs are debarred from obtaining equitable or other relief in this action.

There is nothing better settled in trade-mark law than that where the plaintiffs are guilty of any false representation with respect to a material fact in connection with the property or merchandise covered by a trade mark, relief will not be afforded by a court of equity. The well-known cases of Worden v. California Fig Syrup Co. (187 U. S. 516); Hobbs v. Francais (19 How. Pr. 567); Seabury v. Grosvenor (14 Blatchf. 262); Fetridge v. Wells (4 Abb. Pr. 144); Phalon & Son v. Wright (5 Phila. 464); Prince Mfg. Co. v. Prince's Metallic Paint Co. (135 N. Y. 24); Manhattan Medicine Co. v. Wood (108 U. S. 218), and many others that might be cited, illustrate that rule; but in all of them the representation was material because it related either to the character or quality or the ingredients or the place of origin or the absolute ownership of the product or manufactured article in connection with which the trade mark, device or label was used. In the present case it has been determined by the court below that the plaintiffs were not entitled to protection of their trade mark because they had made a false representation and that it consisted only in the assertion that they personally manufactured their cigarette papers. In view of all the findings it is apparent that that is an immaterial consideration. In the first place, the papers are manufactured in Paris, so that as to their place of origin the statement was true. In the second place, each sheet bears upon it the water mark of the plaintiffs and each sheet is made exclusively for the plaintiffs and no other person than the plaintiffs can by any possibility be furnished with those papers. Therefore, they are the absolute proprietors. How, they merely have said, “ Sole Manufacturers.” If the statement had been, Manufactured solely and exclusively for Gluckman & Son,” it would have been more exact. But they are the absolute owners and possessors of all that is manufactured and have the sole proprietorship of the manufactured article made at the place designated on the label, and it is straining the equitable rule with respect to misrepresentation to the vanishing point of equity to say that there is fraud and deception in the use of the words which the court below has found fatal to the maintenance of the plaintiffs’ right. Under the facts as found, the form of the statement is entirely immaterial, for it is substantially true. There was a gross wrong done the plaintiffs, and they should be fully protected against its further perpetration.

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

Van Brunt, P. J., Ingraham, Hatch and Laughlin, JJ., concurred.

Judgment reversed, new trial ordered, costs to appellants to abide event.  