First Department, May, 1921.

[Vol. 196 to be manufactured for it, is of great value to the plaintiff; and that the acts of defendants show that they intend to deceive and confuse the public to the injury of the plaintiff. The conclusions of law are to the effect that the corporate name of defendant company is so similar to the phrase "Jewelry of Distinction," by which the plaintiff's goods are identified, that confusion and deception are liable to result from its use in this line of business, and that its use is wrongful as against the plaintiff; that plaintiff's trade mark, "Silverite," is valid, and that the use by the defendant company of Silverine," "Silverin," "Distinctive Silverine " and "Distinctive Silverin" on its goods is wrongful as against the plaintiff; that the various designs used by the defendants are so similar to the plaintiff's designs as to constitute unfair competition; that the means by which the defendant company sought to copy the plaintiff's designs in connection with the other acts of the defendants were unfair, and that the defendant's use of order blanks, tags, labels and billheads specified in the complaint constitutes unfair competition; that as against the defendants the plaintiff is the owner of and entitled to the exclusive use of the patterns for which the iron jig saw piercing machines are made; that plaintiff is entitled to an injunction enjoining the defendant company and its agents, servants and employees from making any use whatsoever of its present corporate name in connection with the manufacture or sale of jewelry, and likewise enjoining the use of the names, "Silverine," "Silverin," "Distinctive Silverine" or Distinctive Silverin," or any other name that is a colorable imitation of the plaintiff's registered trade mark, and enjoining the use of the order blanks, tags, labels and billheads, specified in the complaint, and enjoining the use of any designs, patterns, tools or machines, knowledge or possession of which was unfairly or fraudulently obtained from the plaintiff, and particularly the saw piercing machines; that plaintiff is entitled to recover of the defendants the damages sustained by it from such unlawful acts of the defendants, including all profits received by the defendants by reason of said acts, together with its costs and disbursements, and to the appointment of a referee to ascertain and assess such profits and damages if the plaintiff shall be so advised, and

App. Div. 779]
First Department, May, 1921.

entry of judgment in accordance with the decision is directed. The judgment enjoins the defendant company, its officers, directors, agents, servants, attorneys and employees and all persons acting for it from any use whatsoever of its corporate name or any phrase colorably similar to the phrase, "Jewelry of Distinction," in connection with the manufacture or sale of jewelry, and from the use in connection with such manufacture or sale of jewelry, of the names "Silverine," "Silverin," "Distinctive Silverine" or "Distinctive Silverin" or any name that is a colorable imitation of the plaintiff's registered trade mark, and from the use of the order blanks, labels and billheads specified in the complaint, and from any use of designs, patterns, tools or machines, knowledge or possession of which was unfairly or fraudulently obtained from the plaintiff and from any use of the jig saw piercing machine; and it further adjudged that the plaintiff recover its damages including all profits received by defendants from said unlawful acts, and a referee was appointed to ascertain and report said damages and profits, and for the costs of the action as taxed, and that plaintiff have leave to apply at the foot of the judgment for other and further relief.

There is no evidence that the plaintiff has sustained any damages from the acts of the defendants or that the defendants have derived any profits from their acts adjudged to be unjust competition; there was, therefore, no basis for the appointment of a referee and those provisions of the conclusions of law and of the judgment must be stricken out.

It is contended in behalf of the appellants that their corporate name being wholly dissimilar from that of the plaintiff is lawful and that the use thereof cannot be enjoined; that the words "Jewelry of Distinction" and the other words and phrases the use of which has been enjoined are words in common use to the use of which every one is entitled and with respect to which none may acquire an exclusive right, and that it has not been shown that they have acquired a secondary meaning as identifying the plaintiff's business or goods, and that, therefore, the plaintiff is not entitled to an injunction against their use by the defendants. In so far as the judgment is against the individual defendants in their individual capacities there appears to be no evidence warranting it with

First Department, May, 1921.

[Vol. 196

respect to one or two of them; but the appeal was taken by the defendants jointly and no distinction was made upon the argument or in the points between the plaintiff's rights as against the corporation and against the individual defendants.

We think it may fairly be inferred from the evidence that the phrase "Jewelry of Distinction" has acquired in the trade a secondary meaning as indicating the imitation jewelry manufactured and sold by the plaintiff, and that the trade name and trade mark "Silverite" was coined or adopted by the plaintiff to identify the imitation jewelry manufactured by it, and that the corporate name of the defendant company was selected and the words and phrases used by it, the use of which has been enjoined, were adopted and used in bad faith in the hope and expectation that thereby the defendant company would obtain some undue benefit and advantage from the extensive advertisement at great expense by the plaintiff of its imitation jewelry as hereinbefore stated, and that such use by the defendant company of the corporate name selected by it and of the said phrases and words adopted by it were calculated and intended to deceive the public into buying the defendant company's imitation jewelry in the belief that it was manufactured by the plaintiff, and that unless enjoined, such use by the defendant company of its corporate name and of said words and phrases would have that effect. In such cases it is well settled that the use by a party of a corporate name or of fanciful or descriptive phrases or words under which goods manufactured and advertised by another have become known in the trade and which use is intended and calculated to result in unfair competition, even though the corporate name, phrases or words are not such that one party may obtain an exclusive right to the use thereof as a trade name or trade mark, may be enjoined on the theory that the name, phrases or words have thus acquired in the trade a secondary meaning as identifying the business or goods of the party first using them. (Higgins Co. v. Higgins Soap Co., 144 N. Y. 462; T. A. Vulcan v. Myers, 139 id. 367; DeLong v. DeLong Hook & Eye Co., 89 Hun, 399; Oneida Community, Ltd., v. Oneida Game Trap Co., Inc., 168 App. Div. 769; Kayser & Co. v. Italian Silk Underwear Co., 160

App. Div. 779]
First Department, May, 1921.

id. 607; German-American Button Co. v. Heymsfeld, Inc., 170 id. 416; Fischer v. Blank, 138 N. Y. 244; New England Awl Co. v. Marlborough Awl Co., 168 Mass. 156; Shaver v. Heller & Mers, 108 id. 821; Lalance & Grosjean Mfg. Co. v. National Enameling & Stamping Co., 109 id. 317; Saxlehner v. SiegelCooper Co., 179 U. S. 42; Elgin Nat. Watch Co. v. Illinois Watch Co., Id. 665; French Republic v. Saratoga Vichy Co., 191 id. 435; Florence Mfg. Co. v. Dowd & Co., 178 Fed. Rep. 73; G. & C. Merriam Co. v. Saalfield, 198 id. 369; Allen v. Walker & Gibson, 235 id. 230; Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467; Samuels v. Spitzer, 177 Mass. 226; Fuller v. Huff, 104 Fed. Rep. 141; National Cloak & Suit Co. v. Londy & Friend, 211 id. 760; Hartzler v. Goshen, etc., Ladder Co., 55 Ind. App. 455; Bickmore Gall Cure Co. v. Karns, 134 Fed. Rep. 833; Wirtz v. Eagle Bottling Co., 50 N. J. Eq. 164; Standard Paint Co. v. Rubberoid Roofing Co., 224 Fed. Rep. 695.)

The learned counsel for the appellants contends that the plaintiff never advertised its goods as "Jewelry of Distinction" alone, and that that phrase was always preceded by the word Fishson," in larger type; but in that he is in error, for there is evidence that the plaintiff's goods were so advertised without the phrase being preceded by "Fishson." It is also contended that there is no evidence that the plaintiff's goods were called for or sold under the names, phrases and words enjoined, and that the designs and prices were the controlling factors in the sales; but it is a reasonable inference from the manner in which the plaintiff's goods were advertised and in which the attention of customers was drawn thereto by signs in the retail stores that its goods must have become known to some extent at least by the names, phrases and words under which they were advertised. It is also argued that there could not be unfair competition or confusion for the reason that the plaintiff sells to the retail trade and the defendant company sells only to the wholesale trade, namely, to jobbers and department stores, but the conclusion claimed does not follow, for the goods of the defendant company must ultimately reach and be sold in the retail trade.

The injunction in so far as it relates to the corporate name of the defendant company only enjoins the use of the corporate

Third Department, May, 1921.

[Vol. 196 name in connection with the manufacture or sale of jewelry. It is not suggested that the defendant company could continue the use of its corporate name in this line of business and that unfair competition with the plaintiff could be avoided by requiring in connection with the use of the corporate name a prefix or suffix which would show that it had no relation to the plaintiff or its business, and, therefore, there is no occasion for modifying the judgment in that regard.

It follows that the conclusions of law and judgment should be modified by eliminating therefrom the provisions for the recovery of damages and profits received by the defendants, and as modified affirmed, without costs.

CLARKE, P. J., DOWLING, MERRELL and GREENBAUM, JJ.,

concur.

Order modified as directed in opinion, and as so modified affirmed, without costs. Settle order on notice.

Before STATE INDUSTRIAL COMMISSION, Respondent. In the Matter of the Claim of MARY A. METCALF, Respondent, for Compensation under the Workmen's Compensation Law,. v. FIRTH CARPET COMPANY, Employer, and AMERICAN MUTUAL LIABILITY INSURANCE COMPANY, Insurance Carrier, Appellants.

Third Department, May 4, 1921.

Workmen's Compensation Law - reopening case power of State Industrial Commission to reopen case after making lump sum award and make further lump sum award.

Where the State Industrial Commission has made a final award of a lump sum, and that award has been acted on and carried out between the parties, then rights exist in the employer and the insurance carrier, which the Commission cannot take away, but if the disability continues, and the maximum compensation has not been paid, a further award may be made.

Accordingly, the Commission had the power to reopen the case on the application of the claimant after a final award of a lump sum was made, and, it appearing that claimant's disability continued, to make a further lump sum award, not exceeding in all the amount allowed by the statute.