
    Mortimer Falk and Others, Respondents, v. The American West Indies Trading Company, Appellant.
    
      Trade mark — use of words “El Falco’’ to designate a brand of cigars restrained ■— .pi'oof, under a denial that the plaintiffs’ cigars were of excellent quality, that they were not—proof that plaintiffs were deceiving the public — when the fact must be affirmatively alleged. '
    A firm of cigar manufacturers which haS adopted the words “El Falcon” as. a trade mark to designate a brand of cigars made at Key West, Fla., from Havana tobacco, is entitled to an injunction restraining a rival cigar manufacturer from using the words “El Falco” to designate a brand of cigars manufactured by it at Porto Rico, and also from using the word “Falco” alone or in any combination in connection with the manufacture or sale of cigars.
    Where the complaint in an action brought to obtain such an injunction alleges-that the trade mark “El Falcon ” was used in connection with a brand of ■cigars “ of excellent quality of material and superior workmanship, and the cigars are known as clear Havana cigars of the highest grade manufactured in the United States, being manufactured at Key West in the State of Florida, in plaintiffs’ factory, by skilled and experienced workmen,” the defendant, under a denial, of the contents of the paragraph in which such allegation is contained, • is not entitled to give affirmative evidence that the representations in regard to the character and quality of the plaintiffs’ cigars were false and misleading to the public.
    In such a case the court will refuse-to protect the plaintiffs if it appears that they are engaged in practicing a deceit upon the public, but, in order that the defendant may raise that question the matter must, be affirmatively pleaded unless the facts appearing in the case are such as would authorize the court, of its own motion, to take notice of fraud and deceit on the part of the plaintiffs.
    Van Brunt, P. J., dissented,
    
      Appeal by the defendant, The American West Indies Trading Company, from an interlocutory judgment of the Supreme Court in favor of the plaintiffs, entered in the office of the clerk of the county of New York on the 4th day of December, 1901, upon the decision of the court, rendered after a trial at the New York Special Term.
    
      Isaac M. Aron, for the appellant.
    
      Morris S. Wise, for the respondents.
   Patterson, J.:

The appeal in this action is from a judgment entered at the Special Term, by which the defendant, its officers, servants, attorneys and agents, were enjoined and restrained from using the title “El Falco,” or any name or title which would be held to constitute an infringement upon plaintiffs’ brand, trade mark or title of “ El Falcon ” in connection with the manufacture or sale of cigars within the United States; and it was also enjoined from branding, labeling or marking any boxes or packages containing cigars with the title “El Falco ” or any imitation of plaintiffs’ trade mark, title, symbols, devices or accessories, or from causing the same to be done; and it was likewise enjoined from using the word “ Falco ” alone or in any combination in connection with the manufadture or sale of cigars.

The evidence adduced at the trial satisfactorily established the right of the plaintiffs to the exclusive use of the words “ El Falcon ” as a trade mark. That arbitrary or fanciful designation was adopted by the predecessors of the plaintiffs in business some twenty years ago, and has been in continuous use by the plaintiffs and their predecessors as manufacturers of cigars from its adoption until the present time. The proof shows that this designation is used in connection with a well-known and favorite brand of domestic cigars and is of great value to the plaintiffs. The defendant, who is a rival cigar manufacturer, adopted and used the words “ El Falco ” as a trade mark designation and brand of cigars manufactured by it at Porto Rico.

The right of the plaintiffs is fully established, and the testimony admits of no other conclusion than that reached by the justice at Special Term, that the adoption by the defendant of the words “ El Falco ” was an obvious subterfuge. ■ Generally speaking, it is not necessary, in order to entitle the plaintiffs to an injunction, that there should be á fraudulent purpose on the part of the defendant in adopting as a trade mark words so closely resembling and imitating the plaintiffs’ trade mark. While there is not exact identity, the similarity, as remarked by the court below, is very striking, and it is obvious that the mark adopted by the defendant is calculated to deceive the public and to lead them to the supposition that the articles manufactured by the defendant and sold under its claimed trade mark are the goods manufactured by the plaintiffs instead of the defendant. The right of the plaintiffs' to .protection is for the arbitrary trade mark designation, and nothing else. In the appeal papers appear a label used by the plaintiffs and also labels used by the defendant. . There is no such similarity between those labels as would entitle the plaintiffs to enjoin the defendant from using their particular labels, omitting the words “ El Falco/’ nor does the judgment appealed from contain any such injunction. The judgment is properly limited to the prohibition of the use of the words “ El Falco,” and to nothing else.

The claim of the defendant that the words El Falco ” are part of the name of the defendant’s . manager and were used by it with his permission, and that its brand is named after him, w:as evidently a device by which it was sought to evade responsibility for infringing the plaintiffs’ right. As the justice at Special Term very properly says in his opinion : The law will protect the right of a man to use his own name in his own business even if by so doing he may injure another of the same name who has gained a reputation in the same or a similar business; but in such cases it must appear that the.name was honestly used, and the court will permit no artifice or deceit designed or calculated to mislead the public. (Higgins Company v. Higgins Soap Company, 144 N. Y. 462.) ” That the alleged permission of the defendant’s manager to use his name upon a brand of cigars is a mere device, is proven by the fact that the manager’s name is Gregorio Lopez; that he was always known in Porto Rico and Cuba by the name óf Lopez; and although he swears that his name is Gregorio Lopez y Falco, he does not swear that he was known by that full name, or otherwise than as Gregorio Lopez.

The defendant claims that the judgment should be reversed for an error in the exclusion of evidence. It endeavored to show on the cross-examination of one of the plaintiffs that those plaintiffs did not come into court with clean hands, and that they were not entitled to relief because of an alleged imposition upon the public by false representations as to the character and quality of the cigars manufactured and sold by them. The defendant claims that it was entitled to make that proof; that on the pleadings as they stood, it was an issuable .fact. The plaintiffs stated in their complaint that their trade mark was used in connection with a brand' of cigars “ of excellent quality of material and superior workmanship, and the cigars are known as clear Havana cigars of the highest grade manufactured in the United States, being manufactured at Key West in the State of Florida, in plaintiffs’ factory, by skilled and experienced workmen.” This allegation of the complaint is made in connection with the averment that the plaintiffs had adopted and used the trade mark which they claim. The contents of the paragraph of the complaint in which these allegations are contained is denied, and' the defendant now contends that it was entitled, by reason of the condition of the pleadings, to show that the cigars of the plaintiffs known as the “El Falcon” brand were not a superior article or excellent quality and material, and not clear Havana cigars of the highest grade manufactured in the United States, and were not manufactured by skilled and experienced workmen; or, in other words, that it was entitled to show that the plaintiffs were misleading and deceiving the public, and not manufacturing and selling such a brand of cigars as they claimed.

The denial in the answer cannot be construed as entitling the defendant to give affirmative evidence as to the inferiority of the plaintiffs’ goods or as to false representations concerning them which would mislead the public. The only possible effect of that denial would be to put the plaintiffs on proof of the allegation of the complaint in that behalf. But that was an entirely immaterial allegation so far as the plaintiffs’ right to an injunction for the infringement of their trade mark was concerned and they were not required to prove it. That the court would refuse to protect the plaintiffs if they- were practising a deceit upon the public is a thoroughly established rule in these cases. But in order that a defendant may raise the question it must be pleaded, unless the facts and circumstances appearing in the case are such as would authorize the court of its own motion to take notice of fraud and deceit on the part of a person seeking' its protection. That it is necessary to plead the defense that the plaintiffs deceived the public by false representations concerning the article manufactured and sold by them was decided by this court in Fleischmann v. Fleischmann (7 App. Div. 280), where it is said that “ it seems hardly necessary to cite authorities to establish the proposition that where fraud or misrepresentation of the plaintiff is relied upon as a defense to the enforcement of a legal right, it must be pleaded and proved upon the trial.” That was an action for the infringement of a trade mark.- There the plaintiff upon the labels of his merchandise had used the word “ Patented,” and the trial court dismissed the complaint-on the ground that by the use of that .word he had made a false representation to the public, applying the principle that if the plaintiff is himself guilty of any false or misleading representations in relation to the property he seeks to protect, he loses the right to obtain-the’assistance of a court of equity.” This court reversed the judgment based upon that ground for the reason that such a defense must be. both pleaded and proven.

The judgment should be affirmed, with costs.

O’Brien, McLaughlin and Laughlin, JJ., concurred; Van Brunt, P. J., dissented.

Judgment affirmed, with costs.  