
    BRITISH-AMERICAN TOBACCO CO., Limited, v. BRITISH-AMERICAN CIGAR STORES CO.
    (District Court, S. D. New York.
    June 6, 1913.)
    No. 59.
    Tbade-Maeks and Tbade-Names (§ 92) — 'ünfaib Competition — Right to Use op Coepoeate Name.
    A bill by the British-American Tobacco Company, Limited, a British corporation manufacturing tobacco products, which it sells to jobbers and retailers only, held not to state a cause of action for an injunction against the British-American Cigar Stores Company, an American corporation selling tobacco products at retail only, to restrain it from using the words “British-American” in its corporate title, where it was not alleged that the words had acquired a secondary signification in connection with complainant’s products, and the bill showed that the parties were not in competition with each other.
    [Ed. Note. — For other cases, see Trade-Marks and Trade-Names, Cent. Dig. §§ 102, 103; Dec. Dig. § 92.]
    In Equity. Suit by the British-American Tobacco Company, Limited, against the British-American Cigar Stores Company. On motion to dismiss bill under equity rule 29 (198 Fed. xxvi, 115 C. C. A. xxvi).
    Motion granted.
    Nicoll, Anable, Lindsay & Fuller, of New York City, for complainant.
    Kearny & Dickinson, of New York City, for defendant.
    
      
       For other eases see same topic & § numbek m Dec. & Am. Digs. 1907 to date, & Itep’r Indexes
    
   WARD, Circuit Judge.

The hill alleges that the complainant, the British-American Tobacco Company, Limited, a British corporation, is and for some years past has been widely known both in this country and abroad as a manufacturer of tobacco products; that, although its charter authorizes it to sell at retail, it does not do so, but for good reasons stated sells only to jobbers and retailers; that the defendant has very lately been incorporated under the laws of New Jersey, and admitted to do business in this state under the corporate title British-American Cigar Stores Company, and is engaged in the retail tobacco business, selling to consumers solely.

Although the names are not identical, and the complainant does only a wholesale and the defendant a retail business, it is difficult to resist the conviction that the defendant has used these words in its corporate title in order to profit in some way by the complainant’s reputation, if not in the sale of its goods, then in the placing of its capital stock. If it had only wanted, as it alleges, a name descriptive of its intention to establish a chain of stores in Canada and the United States, other words, such as “Canadiau-American Cigar Stores Company” would have served as well.

The bill challenges the right of the defendant to use the words “British-American” as a part of its corporate title, and prays that such use may be enjoined. The words, being geographical, cannot be appropriated as a trade-mark. If the bill had alleged that they had acquired a secondary signification in connection with the complainant’s products, and that the defendant was by using them selling its goods as "the complainant’s and getting the benefit of the complainant’s business, an injunction might issue. But, on the contrary, the bill shows that the parties are not in competition with each other, and expressly states as its grievance that jobbers and retailers buy as little as possible of a manufacturer who competes with them by retailing. It is for this reason that it does not retail and does not wish to be thought to do so. Though the similarity of names may in this way injure the complainant with jobbers and retailers, who are confused thereby and led to suppose that the complainant is .doing a retail business, I do not think this fact gives it the exclusive right to the use of the words.

The motion to dismiss the bill is granted.  