
    Pietro Roncoroni, Respondent, v. Rudolph Gross and Alexander J. Gross, Doing Business under the Firm Name and Style of The American Conserve Company, Appellants.
    
      Trade mark —use of the words “ Conserva Di Tomate” not enjoined — the use.of a label calculated to deceive will be enjoined.
    
    A'merchant who manufactures and-sells preserved tomatoes under the description “ Conserva Di Tomate,” the word “Tomate” being generally understood by Italians to refer to the tomato, is not entitled to an injunction restraining another merchant from -using these words to designate similar preserves, although it appears that the word “Tomate” is used only in a small territory in the north of Italy and among Italians in the United States and that there is another Italian name for tomato, to wit, “Pomidoro,” which is in more general use than. “ Tomate.”
    The use by the defendants of a label in- imitation of that of the plaintiff, calculated to lead the public, when purchasing the defendants’ goods bearing such label, to believe that it is purchasing the plaintiff’s goods, will be restrained.
    Appeal by the defendants, Rudolph Gross and Alexander J. Gross, doing business under the firm name and style of The American Conserve Company, from an order of the Supreme Court, made at the New York Special Term and entered in the office of the clerk of the county of New York, on the 30th day of November, 1903, granting an injunction pendente lite.
    
    
      Jacob J. Josser, for the appellants.
    
      Louis StecMer, for the respondent.
   Ingraham, J.:

By an order entered at Special Term the defendants were enjoined and restrained from using “ the words Conserva Di Tomate ’ as a designation of any tomato preserves or paste, or other product manufactured, sold or dealt in by them or either of them,” and, further, from in any manner using or imitating the label of the plaintiff, and from that order the defendants appeal. It appears that the word Tomate ” is an Italian word for the tomato, only used in a small territory situated in the north of Italy, and is not the Italian name for tomatoes except in that locality; that the Italian word for tomato is Pomidoro,” but that in the United. States the word “Tomate” has been generally understood by Italians to refer to the tomato, and that the phrase “ Conserva Di Tomate,” adopted, by the plaintiff to designate the contents of the cans manufactured and sold by him, would indicate that the article was a preserved tomato. The defendants originally produced and sold the article manufactured by them under the name of Conserva Di Pomidoro,” and sometime before the commencement of this action changed the name to “ Conserva Di Tomate,” the same name under which the plaintiff’s product had been manufactured and sold in the market. It would seem to be clear that as this name adopted by the plaintiff was Italian for preserved tomato, the plaintiff could not acquire by its use, in describing articles manufactured and sold by him, a trade mark, so that others could not use the same phrase, as describing the articles manufactured and sold by them. It is the Italian for the article that the , plaintiff manufactured and sold, 'and it is now well settled that no j one can acquire a trade mark by the use of words of a foreign | language which correctly describe the article manufactured any ’ more than a trade mark can be acquired in the words of the ' English language, which properly describe such product. It is quite clear that the plaintiff- could not, by calling this article “ preserved tomatoes,” acquire the exclusive right to use that phrase, nor. could he, by adopting the Italian words, which are a translation of the English words describing the character of what he manufactures, acquire a trade mark in the Italian words. (Caswell v. Davis, 58 N. Y. 223; Barrett Chemical Co. v. Stern, 176 id. 27.) The words used by the plaintiff are descriptive— they are the Italian for preserved tomatoes used in a portion of Italy and among Italians in the United States; and' though there is another Italian name for tomato' in more general use than that adopted by the plaintiff, still the word ‘‘ Tomate,” more closely resembling the English name of the vegetable, is none the less a name which describes the vegetable from which the plaintiff’s product is manufactured, and the name taken as a whole is a fair description of the manufactured article. This is not the ease where an entirely arbitrary name, having no relation to the quality or nature of the article manufactured, has been invented by the plaintiff, but is an Italian phrase which fairly describes the manufactured article, and I think the plaintiff can obtain no exclusive right to call the manufactured article by this name. The affidavits, however, disclose a clear attempt by the defendants to imitate the plaintiff’s label which entitled the plaintiff to an injunction restraining the defendants from such imitation as will induce the public to believe that they are purchasing the plaintiff’s goods, when in reality they are purchasing goods prepared and manufactured by the defendants.

The order must be modified by striking out the provision restraining the defendants from using the words “ Conserva Di Tomate ” as descriptive of the product sold, but continuing the injunction so as to restrain the defendants from using-the label, a copy of which is annexed to the complaint, or any other label in imitation of that of the plaintiff, and the order appealed from, as thus modified, is affirmed, without costs to either party on this appeal.

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

Order modified as directed in opinion, and as modified affirmed, without costs.  