
    William B. Volger and Bernard G. Volger, Respondents, v. William A. Force and Harry D. Dye, Appellants.
    
      Trade mark—substitution of “ Excellent” for "Excelsior” on a. like label—• infringement of.\ justifying an injunction — effect of the absence of the manufacturer’s name and the insertion of that of the purchaser of the a/rticle — basis for an additional allowance, when wanting.
    
    In an action brought to restrain the defendants from using certain labels upon the ground that they were an infringement upon those adopted by the plaintiffs,, it appeared that the plaintiffs had for nine years manufactured felt inking pads, and had adopted the word “Excelsior” and a descriptive label hearing the words “Excelsior Felt Pad,” and that the product had become known to the trade as the “ Excelsior Pad; ” that the defendants, after purchasing the “ Excelsior Pad ” for nine years, stopped doing so and placed upon the market felt pads under a label which was an exact copy of that adopted , by the plaintiffs, except that the word “ Excellent ” was substituted for the word “'Excelsior.”
    The defendants gave no explanation of how their label happened to he a reproduction of the plaintiffs’ label.
    
      Held, that whether it.be considered that the plaintiffs had a valid trade mark, or that the act of the defendants clearly indicated unfair competition in business, the plaintiffs were entitled to an injunction;
    That the fact that the plaintiffs had manufactured “ Excelsior Pads ” for wholesale and retail houses, printing on the outside of the labels the name of the house for which they were manufactured, and that the plaintiffs’ names did not appear thereon, did not prevent the plaintiffs from acquiring a valid trade mark;
    That no damages having been awarded to the plaintiffs, and there being no evidence that the plaintiffs’ sales had fallen off or that their profits had been decreased or that their trade mark had been injured in consequence of the infringement, there was no basis for an additional allowance.
    Appeal by the defendants, William A. Force and another, from a judgment of the Supreme Court in favor of the plaintiffs, entered in the office of the clerk of the county of Hew York on the 21st day of January, 1901, upon the report of a referee, and also from an order made at the Hew York Special Term and entered in said clerk’s office on tlie 27th day of December, 1900, granting the plaintiffs an extra allowance.
    
      William-E. Warland, for the appellants.
    
      3. Albertus West, for the respondents.
   llTGRAHAM, J. :

The judgment appealed from restrains the defendants from selling or using certain labels of the plaintiffs as an infringement of the plaintiffs’ trade mark adopted to indicate' the goods sold and manufactured by them. It appears without contradiction that the plaintiffs in September, 1891, adopted the word “Excelsior” to indicate certain felt pads used for the purpose of inking stamps manufactured by them, and at the same time adopted a distinctive label having upon it the words “Excelsior Felt Pad.” These labels seem to be of three sizes and were placed upon the outside of packages containing one dozen of these pads, distinguished by Eos. 0, 1 and 2, and during that time the pads manufactured by the plaintiffs had become known in the trade as the “ Excelsior Pad,” and the plaintiffs had developed a large and profitable business, aggregating about $40,000 a year. For eight or nine years the defendants had purchased from the plaintiffs pads bearing this label, but subsequently, in the year 1899, stopped purchasing “Excelsior” pads from the plaintiffs and caused a label to be printed which was an exact copy of that adopted by the plaintiffs, except that the word “ Excellent ” was substituted for the word “ Excelsior, ” the form of the package, the shape of the pad, the color of the ink and the letters being an exact reproduction of the plaintiffs’ label, under which these goods were introduced in the market.

One of the defendants was called as a witness and testified that their labels were printed for them by a printer, the witness being unable to tell who gave the order or how it was that the label thus printed was an exact reproduction of the plaintiffs’ label. The plaintiffs’ name does not appear upon the labels, nor does the defendants’ name appear upon the labels adopted by them, the evidence being that these goods were generally sold by the name adopted, the plaintiffs’ pads being sold under the name “ Excelsior.” The plaintiffs manufactured Excelsior Pads ” for wholesale and retail houses, printing upon the outside labels the name of the house for whom they were manufactured, but it would appear that such pads manufactured for other houses, while designated as Excelsior Pads,” did not have upon them the plaintiffs’ distinctive labels.

The fact that the plaintiffs’ name was not on the label, or that they manufactured the goods for retail dealers, calling them by the name adopted to indicate their manufacture by the plaintiffs, does not prevent the plaintiffs from acquiring a trade mark in the name or label adopted. The trade mark indicates the goods that are sold under it. They become known to the public under the name that has been adopted to indicate this particular kind of goods ' manufactured by a particular firm. Whether this firm .makes its name a part of the trade mark or not is immaterial. It is the name and device adopted to indicate the particular goods manufactured by the plaintiffs that is the trade mark ; and if they are manufactured only by the person who has adopted the name- and trade ■ mark, they could be obtained only from him. The defendants seem to lay great stress Upon the fact that there was no name upon this label, as though a person could not acquire' a valid trade mark Unless his name was a part of the trade mark. This is a novel proposition', is not, so far far as I know, supported - by any authority, and seems entirely opposed to the principle upon which a trade mark when adopted becomes property which a court of equity will protect.

These pads have become known as “ Excelsior ” pads. They are sold under and have become known by that name and by the particular label adopted ; and unless that trade mark is infringed, those who wish to get Excelsior pads must purchase the pads manufactured by the plaintiffs. I think that the plaintiffs have a valid trade mark in both the name “ Excelsior ” and in the label adopted by them.

Wor is there the slightest doubt but that the defendants in adopting this label, changing the word “ Excelsior to Excellent,” were guilty of an infringement' of ,tlie plaintiffs’ trade mark, which was a fraud upon the plaintiffs and upon the public. The defendants had purchased goods from the plaintiffs for years; they suddenly stopped purchasing, began manufacturing similar goods, and put them Upon the market, adopting a name like that used by plaintiffs as indicated their pads, and a label almost identical 'with that of the plaintiffs, entirely failing to explain how it was that when they had a label printed they almost exactly reproduced the plaintiffs’ label and adopted a name which was almost identical with the name adopted by the plaintiffs for their goods. The fraud upon the plaintiffs .is apparent, and whether we consider this as a valid trade mark or as an act óf the defendants clearly indicating unfair competition in business, the plaintiffs are entitled to an injunction,

Hor is there anything in the claim that, because the plaintiffs have manufactured their pads and sold them to others with a label upon which the names of the dealers to whom they were sold were printed, they would be prevented from restraining the defendants from this fraudulent attack upon their property and business. "Win think that the evidence clearly shows a deliberate attempt on the part of the defendants to adopt a name and label under the guise of which they could sell their goods as the goods of the plaintiffs, and the court below was right in enjoining the defendants from continuing to use this label and trade mark.

The court below, however, awarded the plaintiffs an allowance of $250. I cannot find in the case any basis upon which this allowance could be awarded. On the motion for the extra allowance, one of the plaintiffs swears that their trade in these pads amounted to $40,000 annually, the net profits being about $6,000, and the value 'of the trade mark and design on the label is not less than $1,000. This is the only evidence of the value of the trade mark, the protection of which is the subject-matter of the action, bio damages were awarded to the plaintiffs. There is no evidence that the plaintiffs’ sales have fallen off in consequence of the infringement of the defendants, that their profits have been in any way decreased, or that the trade mark has been injured.

The order granting the allowance should, therefore, be reversed, with ten dollars costs, and the judgment appealed from affirmed, with costs.

Van Brunt, P. J., O’Brien, McLaughlin and Hatch, JJ\, concurred.

Judgment affirmed, with costs to respondents, and order reversed, with ten dollars costs to appellants.  