as to deprive himself of the right to use it as such, and confer this right upon another. A name used as an adjective of description is not necessarily understood by the public as any assertion that the person whose name is used is the maker of the article. One who has carried on a business under a trade name, and sold a particular article in such a manner, by the use of his name as a trade-mark or a trade name, as to cause the business or the article to become known or established in favor under such a name, may sell or assign such trade name or trade-mark when he sells the business or manufacture, and by such sale or assignment conclude himself from the further use of it in a similar way. . . . A person may be enjoined, therefore, from using his own name as a description of an article of his own manufacture, and from selling the article under that particular name, when he has parted with the right thus to apply it. Gillis v. Hall, 2 Brewst. 342. Kidd v. Johnson, 100 U. S. 617, 619. It is not upon the ground of the invasion of the trade name adopted by another, but by reason of the contract he has made, that he is deprived of the right himself to use his name as all others of the same name may use theirs. Upon the evidence in the case at bar, it appears that "LePage's Liquid Glue" was the name adopted by Brooks and LePage for the light glues manufactured by them, a special word, such as "straw," "carriage," etc., indicating for what especial use the particular light glue was designed, being inserted before the word "glue;" that they manufactured glues under this name and at a subsequent period, in 1882, formed the plaintiff corporation, to which they sold their business, and which continued the manufacture of these glues under the same name. The defendant was a member of the corporation, and a director thereof, until February, 1886. He then left it, and shortly after engaged in the manufacture and sale of glue at Gloucester, where the plaintiff's business has always been carried on, using the name "LePage's Improved Liquid Glue" to advertise the article produced by him. When Brooks and LePage sold their business to the plaintiff, they in express terms sold "the right to use the trade-marks belonging to or in use by said co-partnership." When LePage (with Brooks) sold to the corporation, and when he left the corporation, it must be held that the name "LePage's Liquid Glue" was a trade name or trade-mark, and it is not important which term is used, indicating the liquid glue which the plaintiff was manufacturing. The right to use it as such was necessarily an exclusive use, as it was intended thus to distinguish the plaintiff's goods from those of others. As a trademark belonging to the corporation, the defendant while an officer thereof had himself sought to obtain registration for it at the United States Patent Office. We are of opinion, therefore, that the defendant should be enjoined from using the words "LePage's Improved Liquid Glue," or "LePage's Liquid Glue," to describe the article manufactured by him, and from describing the company under whose name he conducts his business as "LePage's Liquid Glue Company," whether with or without any addition thereto. While the plaintiff has not sought to prevent the defendant from manufacturing glue, we add, in order to avoid misunderstanding, that while the defendant cannot use the words adopted as a trade name for the article manufactured by him, we do not decide that he may not use the words "Liquid Glue," or other appropriate words, to describe his product, or to state in that connection that he is himself the manufacturer of it. Decree for the plaintiff. 861. CHAS. S. HIGGINS COMPANY v. HIGGINS SOAP COMPANY COURT OF APPEALS OF NEW YORK. 1895 144 N. Y. 462, 39 N. E. 490 APPEAL from judgment of the General Term of the Supreme Court in the second judicial department, entered upon an order made July 28, 1893, which affirmed a judgment in favor of defendant entered upon a decision of the court on trial at Special Term. 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 other facts, is liable to and has 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 Chas. S. Higgins and others, purchased from Chas. 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 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." . . . 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. . . . H. Aplington, for appellant. The relief asked for in this action is based upon the principles involved in trade-mark cases. Jesse Johnson, for respondent. Every man has the right to use his own proper name to designate the product of his own ingenuity, skill or industry. . . . Mr. Higgins simply uses his own name, and, if some one remembers who and what he was in the soap business, that does not present a case for an injunction. . . . The fact that the names here in controversy are the names of corporations and not of persons, makes the rule still stronger in defendant's favor. . . . ANDREWS, C. J., [after stating the case as above:] 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." . . . Any person may use in his business his family name, provided he uses 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. . . . 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. . . . 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 not 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. . . . 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 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 even 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 evidence shows that confusion has arisen, and it is a reasonable presumption that if the defendant is permitted to continue 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. Topic 2. Common Locality Judgment reversed. 862. AMERICAN WALTHAM WATCH COMPANY v. UNITED STATES WATCH COMPANY SUPREME JUDICIAL COURT OF MASSACHUSETTS. 1899 173 Mass. 85, 53 N. E. 141 BILL in equity, filed October 15, 1890, and amended September 22, 1898, to restrain the use of the word "Waltham" on watches made by the defendant, to the detriment of the plaintiff's business as a manufacturer of watches in Waltham. Hearing before KNOWLTON, J., who, with the consent of the parties, reported the case for the consideration of the full court. The facts appear in the opinion. W. A. Munroe and F. P. Fish, for the plaintiff. Causten Browne and O. R. Mitchell, for the defendant. HOLMES, J. This is a bill brought to enjoin the defendant from advertising its watches as the "Waltham Watch" or "Waltham Watches," and from marking its watches in such a way that the word "Waltham" is conspicuous. The plaintiff was the first manufacturer of watches in Waltham, and had acquired a great reputation before the defendant began to do business. It was found at the hearing that the word "Waltham," which originally was used by the plaintiff in a merely geographical sense, now, by long use in connection with the plaintiff's watches, has come to have a secondary meaning as a designation of the watches which the public has become accustomed to associate with the name. This is recognized by the defendant so far that it agrees that the preliminary injunction, granted in 1890, against using the combined words, "Waltham Watch" or "Waltham Watches" in advertising its watches, shall stand and shall be embodied in the final decree. The question raised at the hearing, and now before us, is whether the defendant shall be enjoined further against using the word "Waltham," or "Waltham, Mass.," upon the plates of its watches without some accompanying statement which shall distinguish clearly its watches from those made by the plaintiff. The judge who heard the case found that it is of considerable commercial importance to indicate where the business of manufacturing is carried on, as it is |