
    Chas. S. Higgins Company, App’lt, v. Higgins Soap Company, Resp’t.
    
    
      (Court of Appeals,
    
    
      Filed January 22, 1895.)
    
    1. Tradename—What may be appropriated.
    An exclusive right may be acquired in the name in which a business has been carried on, whether the name of a partnership or of an individual, and it will be protected against infringement by another who assumes it for the purp jses of deception or, it seems, even when innocently used without right to the detriment of another, and this right, which is in the nature of a trade-mark, may be sold or assigned.
    2. Same.
    The same rule applies to corporate names as to the names of firms or individuals.
    3. Same—Injunction.
    An injunction lies to restrain the simulation and use by one corporation of the name of a prior corporation, which tends to create confusion and to enable the latter corporation to obtain, by reason of similarity of names, the business of the prior one.
    4. Same.
    The sole test of liability is whether the acts done, either in organizing the later corporation or in the prosecution of its business subsequently, invaded any right of the prior corporation or exceeded the boundaries of fail-competition.
    5. Same.
    The later corporation derives no additional immunity from the fact that the individual name, used in its corporate name, was that of one or more of its corporators, or that such individual, or any one of that name, might engage in the same business under the family name, or that he and the other corporators of the same name had consented to its use.
    Appeal from judgment of the general term of the supreme court in the second judicial department, entered upon an order, which affirmed a judgment in favor of defendant entered upon a decision of the court on trial at special term.
    
      H. Arlington, for app’lt; Jesse Johnson, for resp’t.
    
      
       Reversing. 54 St. Rep. 89.
    
   Andrews, Oh. J.

The plaintiff seeks in this action to restrain the use by the' defendant in this state of its corporate name, “ Higgins Soap Company,” in the business of manufacturing and selling soap, on the ground that such use is an unlawful invasion of the rights of the “ Chas. S. Higgins Company,” the plaintiff corporation. The corporate names of the respective corporations are not identical, but it is claimed in behalf of the plaintiff that there is a similarity between them which, in connection with ether facts, is liable to and lias produced confusion and will enable the defendant to appropriate the trade of the plaintiff. The facts found show that in 1890, prior to the organization of the corporation defendant, under the laws of New Jersey, which took place in 1892, the plaintiff, a domestic corporation, organized by Charles S. Higgins and others, purchased from Charles S. Higgins and his partner, for the sum of $810,000 in stock and bonds, the soap business originally established in Brooklyn by the father of Charles S. Higgins in 1846, to which business Charles S. Higgins succeeded on his father’s death in 1860, together with the good will, labels, trade marks and other property employed in the business. The business was very valuable, and the plaintiff and its predecessor expended, subsequent to 1879, in advertising, the sum of $800,000, and the product was extensively sold in New York and other states and was well known to the trade as “Higgins Soap,” and the plaintiff corporation was sometimes known as the “Higgins Soap Company.” The plaintiff and its predecessors manufactured a great variety of soaps, which were put up under different names, the leading article being known as “ Chas. S. Higgins German Laundry Soap,” but as we infer from the findings, all the soap so manufactured passed under the general name of “ Higgins Soap.” On the organization of the plaintiff corporation and the purchase of the business, it continued to carry it on in Brooklyn, where it had been originally established, and where it has ever since been carried on. Charles S. Higgins was a director of the plaintiff and its first president, and so continued for a year after its incorporation, when he was displaced from his position as president and ceased to be a director of the company. The ground of his discharge does not appear. Soon afterwards, in the summer of 1892, Charles S. Higgins, with his wife, his son and two other persons, organized the defendant corporation under the name of the “ Higgins Soap Company,” to carry on the soap business, and commenced the manufacture of soap, having its factory, principal office and place of business outside of New Jersey, in the city of Brooklyn. Charles S. Higgins became the president of the defendant corporation, and among other products it manufactured and put up a soap in bars, on the wrappers of which appear the words “ Higgins Soap Company, Original Laundry Soap, Charles S. Higgins, Prest,” and the bars were impressed with substantially the same words.

It was shown on the trial that letters intended for the plaintiff, containing orders for goods, or relating tb other business matters, had been'sent addressed to the “Higgins Soap Company,” “ Chas. S. Higgins Soap Co.,” and “ Chas. Higgins Co.,” but in general the plaintiff’s place of business was added to the address and they were received by the plaintiff. There were produced twenty-eight letters and envelopes of this kind, written within four months after the organization of the defendant and the commencement of this action, and it was stated that these did not comprise all the letters of this discription.

The main ground upon which the plaintiff has been defeated ■in the courts below is that Charles S. Higgins or the members of his family, either separately or jointly, had the right to establish the soap business and to use the name of Higgins in conducting it, and to designate the product as “ Higgins Soap,” and that no right of the plaintiff was invaded by giving to the corporation formed by them the name of “Higgins Soap Company."

The case of Meneely v. Meneely, 62 N. Y. 427, following other cases, is an authority upon the proposition that any person may use in his business his family name, provided he used it honestly and without artifice or deception, although the business he carries on is the same as the business of another person of the same name previously established, which has become known under that name to the public, and although it may appear that the repetition of that name in connection with the new business of the same kind, may produce confusion and subject the other party to pecuniary injury. The right of a person to use his family name in his business is regarded as a natural right of which he cannot be deprived, by reason simply of priority of use by another of the same name. In the bill of sale from Charles S. Higgins to the plaintiff the former consented that so long as he should be allowed a salary of fifteen thousand dollars per year for his services, he would give to the company the full benefit of his receipts, processes, etc., and that “ so long as he may be employed at the salary aforesaid, he, said Higgins, would refrain from making or selling soap in the city of Brooklyn except for said company,” thereby, by implication, reserving the right to engage in the business if the plaintiff should terminate his employment. But the question as to the right of the defendant to assume the name of the “ Higgins Soap Company,” or to do business in that name, is not affected by any contract entered into between Charles S. Higgins and the plaintiff. The defendant is a distinct person in the law from Charles S. Higgins, one of its corporators and officers. It had entered into no contract with the plaintiff, nor does it derive any of its rights from Charles S. Higgins. It stands in respect to the question involved in this litigation in the same situation as if Charles S. Higgins had never been a corporator or stockholder. It cannot appropriate the name, or the trade marks, or the business of the plaintiff by any simulation or deceit, because the law prohibits such appropriation by any person, natural or artificial; but the fact that Charles S. Higgins was active in organizing the defendant, or that he may have been actuated in doing so by feelings hostile to the plaintiff or by a desire to injure its business, is, as we conceive, irrelevant to the case. The sole test of liability is whether the acts done, either in organizing the defendant or in the prosecution of its business subsequently, invaded any right of the prior corporation or exceeded the boundaries of fair competition. On the other hand we think it is equally clear that the defendant derives no additional immunity from the fact that the name of “ Higgins,” in its corporate name, was that of one or more of its corporators, or that Charles S. Higgins, or any one of that name, might engage in the soap business under the family name, or that Charles S. Higgins and the other corporators of the same name had consented to its use. The right of a man to use his own name in his own business the law protects, even when such use is injurious to another who has established a prior business of the same kind and gained a reputation which goes with the name. But in such cases the courts require that the name shall be honestly used, and they permit no artifice or deceit, designed or calculated to mislead the public and palm off the business as that of the person who first established it and gave it its reputation. Croft v. Day, 7 Beav. 84; Halloway v. Halloway, 13 id. 209; Cement Co. v. Le Page, 147 Mass. 206. It is well settled that an exclusive right may be acquired in the name in which a business has been carried on, whether the name of a partnership or of an individual, and it will be protected against infringement by another who assumes it for the purposes of deception, or even when innocently used without right to the detriment of another, and this right, which is in the nature, of a right to a trade mark, may be sold or assigned. Levy v. Walker, 10 Ch. Div. 436; Hoxie v. Chaney, 143 Mass. 592; Bassett v. Percival, 5 Allen, 345; Cement Co. v. Le Page, supra; Millington v. Fox, 3 Myl. & Cr. 338. In respect to corporate names the same rule applies as to the names" of firms or individuals, and an injunction lies to restrain the simulation and use by one corporation of the name of a prior corporation which tends to create confusion and to enable the later corporation to obtain, by reason of the similarity of names, the business of the prior one. The courts interfere in these cases, not on the ground that the state may affix such corporate names as it may elect to the entities it creates, but to prevent fraud, actual or constructive. The names of corporations organized under general laws, and in most other cases, are chosen by the promoters, and it would be an easy way to escape from the obligations which are enforced as between individuals, if a corporation were granted immunity by reason of their corporate character. The principle upon which courts proceed in restraining the simulatipn of names in the nature of trade marks and have come to designate the business of a particular person or company, is stated in Lee v. Haley, L. R (5 Ch. App.) 155, an action’ to restrain the use by the defendant of the name of The Guinea Coal Co., in his business. “ I quite agree (said Gifford, L. J.), that they (plaintiffs) have no property in the name (Guinea Coal’Co.), but the principle upon which the cases on the subject proceed is, not that there is property in the word, but that it is a fraud on a person who has established a trade and carries it on under á given name, that some other person should assume the same name, or the same name with a slight alteration in such a way as to induce persons to deal with him in the belief that they are dealing with the person who has given a reputation to the name.” The cases are not infrequent in which the use of corporate names has been restrained on the principle of'the trade mark cases. Holmes, Booth & Haydens Mfg. Co. v. Holmes, Booth & Atwood Mfg. Co., 37 Conn. 278; Massam v. Thorley Cattle Food Co., L. R. (14 Ch. Div.) 748; Celluloid Mfg. Co. v. Cellonite Mfg. Co., 32 Fed. Rep. 94; Newby v. Oregon Cen tral Rway Co., 1 Deady, 609; Rogers Mfg. Co. v. Rogers & Spurr Mfg. Co., 11 Fed. Rep. 495; Roman Cement Co. v. The Le Page Co., 51 id. 942.

Whether the court will interfere in a particular case must depend upon circumstances; the identity or similarity of the names; the identity of the business of the respective corporations ; how far the name is a true description of the kind and quality of the articles manufactured or'the business carried on; the extent of the confusion which may be created or apprehended, and other circumstances which might justly influence the judgment of the-judge in granting or withholding the remedy. Whether upon equitable principles the remedy should have been awarded in this. case upon the facts proved and found is the question in this case. If the right of the plaintiff to relief depended exclusively upon the comparison of the corporate names of the parties, and the inferences to be drawn from such comparison alone and without. reference to any extrinsic facts, it might well be doubted whether the names are so similar that the court could find that confusion and injury would be likely to arise. But the case does not rest-alone upon the -inferences from such comparison. It would - naturally be inferred from the names that both parties were corporations. The name of “ Higgins ’’ appears in each. The name of the plaintiff does not itself indicate the business of the plaintiff corporation, while the name of the defendant describes its business. But while the plaintiff’s name does not describe its business, its product has come to be known to the trade as “ Higgins-Soap,” and to the public the name of the product identified the-plaintiff as the manufacturer of this product, and the company came to be known and called, to some extent, the Higgins Soap. Company.” The use of the name “ Higgins ” in connection with the business was valuable because of its use for a great number of years by the father of Charles S. Higgins and subsequently by the-son, under which a large business lmd been built up, and by reason of the large sums which had been expended in advertising the-product. -The name of the plaintiff in connection with these facts-indicated to dealers in soap that the article known as “ Higgins Soap ” was manufactured by the plaintiff. The manufacture had been established for fifty years, and carried on in the same place. Among the labels which were transferred to the plaintiff was one-containing the words “Higgins Soap,” and the word “ Higgins” was placed upon many of the labels. It cannot be doubted upon the findings that the reputation of “ Higgins Soap,” when the defendant corporation was organized, applied to, and designated to-the trade, the soap manufactured by the plaintiff and its predecessors. The promoters of the defendant, knowing the history of the business established by Higgins, Sr., in 1846, its transfer to-the plaintiff, that the product was known to the trade as “ Higgins Soap,” that the business had become very valuable, and that large sums had been expended in advertising it, proceeded to-organize the defendant corporation under the name of the “ Higgins Soap Company,” and to manufacture soap in the same city where the plaintiff’s business was carried on. The inference seems-irresistible that the defendant assumed its corporate name so that it should carry the impression that it was the manufacturer of “Higgins Soap,” so well known to the public. But if the name was assumed in good faith, and without design to mislead the public and acquire the plaintiff’s trade, the defendant, knowing the facts, must be held to the same responsibility as if it acted under the.honest impression that no right of the plaintiff was invaded. The names are not identical, but, as said by Bradley, J., in Celluloid Co. v. Cellonite Co., supra, “ Similarity, not identity, is the usual recourse where one party seeks to benefit himself by the good name of another.” In that case the learned and experienced judge who sat therein expressed the opinion that the use of the corporate name of the defendant should be restrained, although there was a much greater dissimilarity between the names of the parties here. As between these parties the case is,, we think, the same as if the word “ soap ” was written into the plaintiff’s name and its corporate designation was “Chas. S. Higgins Soap Company.” The evidence shows that confusion has arisen, and it is a reasonable presumption that if the defendant is permitted to carry on the business of soap making under its present name the public will be misled and the plaintiff’s trade diverted, the extent of such diversion increasing with the increase of the defendant’s business.

We think the plaintiff, upon the facts found and proved, was entitled to relief by injunction. .

The judgment should be reversed and a new trial granted.

All concur, except Haight, J., not sitting.

Judgment reversed.  